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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
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`MELANIE O’REILLY,
`Plaintiff,
`
`v.
`VALLEY ENTERTAINMENT, INC., et al.,
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`Defendants.
`____________________________________/
`
`No. C-09-03580-CW (DMR)
`REPORT AND RECOMMENDATION
`RE PLAINTIFF’S MOTION FOR
`DEFAULT JUDGMENT
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`Plaintiff, an Irish citizen and resident of California, is a recording artist and songwriter who
`has brought suit against Defendant St. Clair Entertainment Group1 for copyright infringement of four
`of Plaintiff's musical works entitled “Annie Moore,” “Oilean Draiochta,” “Tir Na Mara,” and “Mo
`Bhron Ar An Bhfarrage.” Docket No. 26 (Second Amended Complaint, hereinafter “SAC,” ¶¶ 1,
`12-21); Docket No. 39 (Declaration of Melanie O'Reilly in Support of Entry of Default Judgment,
`hereinafter “O'Reilly Decl.,” ¶ 2). Plaintiff filed a Motion for Default Judgment in which she seeks
`actual damages for copyright infringement. The Court conducted a hearing on September 9, 2010.
`Subsequently, Plaintiff submitted supplemental briefing and evidence in response to questions raised
`
`1 Plaintiff originally filed suit against an additional entity, Valley Entertainment, Inc.,
`which is no longer a party to this action, pursuant to the dismissal with prejudice of all claims for
`relief against Valley Entertainment. As used throughout this opinion, “Defendant” refers to St. Clair
`Entertainment Group.
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`by the Court at oral argument. A further hearing was held on December 9, 2010. For the reasons set
`forth herein, it is recommended that Plaintiff’s Motion for Default be GRANTED.
`I. BACKGROUND
`On August 5, 2009, Plaintiff filed an action for copyright infringement under the Copyright
`Act of 1976, 17 U.S.C. § 101, et seq. (“Copyright Act”). On November 10, 2009, Defendant was
`personally served in Delaware with the summons and complaint. Docket No. 31 (Exh. A) (“Return
`of Service”). On February 4, 2010, Plaintiff filed a SAC, which was also personally served on
`Defendant. Docket No. 26 (SAC); Docket No. 33 (proof of service). The SAC did not assert new
`claims for relief against Defendant.
`In her SAC, Plaintiff alleges two causes of action against Defendant under the Copyright
`Act, one for copyright infringement and the second for contributory infringement. Docket No. 26
`(SAC ¶¶ 12-26). Plaintiff contends that each of the four musical works at issue in this action is
`owned by her and registered to her in Ireland.2 Id. (SAC ¶ 8); Docket No. 39 (O'Reilly Decl. ¶ 2).
`Plaintiff further alleges that Defendant knew the four works were registered to Plaintiff but without
`authorization, Defendant willfully copied, distributed, and/or publicly displayed Plaintiff's works.
`Docket No. 26 (SAC ¶¶ 9, 11, 13-18). In support of her allegations, Plaintiff has submitted a
`declaration attesting that Defendant wrongfully reproduced and distributed her works on seven
`different musical albums. Docket No. 39 (O'Reilly Decl. ¶¶ 2-5). Plaintiff further attests that she
`has retrieved data regarding sales of these albums in the United States from the music industry’s
`official sales tracking agency. Id. (O'Reilly Decl. ¶¶ 3-5). Finally, Plaintiff alleges that as a result of
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`2 Plaintiff uses the term “musical work” in her pleadings and supporting declarations . The
`Copyright Act does not define “musical work.” See Jennifer L. Pridgeon, The Performance Rights
`Act and American Participation in International Copyright Protection, 17 J. Intell. Prop. L. 417, 420
`& n.13 (2010) (“musical work” includes the lyrics and notes of the song, as distinct from the actual
`recording of the song’s performance; Congress did not define “musical work” in the Copyright Act
`due to “settled meaning” of the term). Plaintiff further attests that her works were recorded on an
`album. See Docket No. 54 (Second O'Reilly Supp. Decl. ¶ 2). Hence, Plaintiff’s works are “sound
`recordings” under the Act. See 17 U.S.C. § 101 (defining “sounds recordings” as “works that result
`from the fixation of a series of musical, spoken, or other sounds... regardless of the nature of the
`material objects, such as disks, tapes, or other phonorecords, in which they are embodied”).
`Whether Plaintiff’s works are deemed “musical works” or “sound recordings,” both categories are
`subject to protection under the Copyright Act. See 17 U.S.C. § 102. Though there are differences in
`the exclusive rights granted by the Copyright Act to a copyright owner of “musical works” versus
`“sound recordings,” such differences do not affect the analysis herein.
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`Defendant’s wrongful conduct, Plaintiff has suffered damages. Docket No. 26 (SAC ¶¶ 20-21).
`Having not received a response from Defendant to her SAC, Plaintiff filed a request with the
`Clerk to enter default, which was entered by the Clerk on March 26, 2010. Docket No. 34. On June
`9, 2010, Plaintiff filed the instant Motion seeking default judgment only as to her First Cause of
`Action for copyright infringement under 17 U.S.C. § 501, and limiting the relief sought to actual
`damages under 17 U.S.C. § 504 (b), in the form of “lost artist royalties” and “mechanical royalties.”
`Docket No. 39 (Mot. at 2:5-10); Docket No. 49 (Supp. Brief at 2:19-21).
`The Court notes that Plaintiff was ordered to file three supplemental declarations in support
`of her Motion for Default. See Docket No. 48; Docket No. 51; Docket No. 57. Plaintiff was also
`required to serve Defendant with a copy of the Court’s orders regarding the submission of
`supplemental evidence and providing notice of the December 9, 2010 hearing and its scope
`(including the fact that additional evidence which was not part of the pleadings would be subject to
`further examination by the Court at the default hearing). See Docket No. 48; Docket No. 51.
`Moreover, Plaintiff was ordered to serve Defendant with her subsequent submissions of evidence.
`See Docket No. 48; Docket No. 51; Docket No. 57. Plaintiff served Defendant accordingly. See
`Docket No. 53 (proof of service); Docket No. 55 (same); Docket No. 62 at 5 (same). Defendant did
`not submit any form of opposition and has not made an appearance in this action.
`II. ANALYSIS
`When entry of default judgment is sought, the court has an affirmative duty to look into its
`jurisdiction over both the subject matter and the parties. In re Tuli, 172 F.3d 707, 712 (9th Cir.
`1999). In addition, a court must “assess the adequacy of the service of process on the party against
`whom default judgment is requested.” Board of Trustees of the N. Cal. Sheet Metal Workers v.
`Peters, No. C-00-0395 VRW, 2000 U.S. Dist. LEXIS 19065, at *2 (N.D. Cal. Jan. 2, 2001).
`Because default judgments generally are disfavored, courts have required “strict compliance with the
`legal prerequisites establishing the court’s power to render the judgment.” See Varnes v. Local 91,
`Glass Bottle Blowers Ass'n, 674 F.2d 1365, 1369 (11th Cir. 1982). The Court will therefore address
`the issues of subject matter jurisdiction, personal jurisdiction, and service of process before
`examining the merits of Plaintiff’s motion.
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`A.
`
`Subject Matter Jurisdiction
`Plaintiff’s SAC alleges copyright ownership and infringement under 17 U.S.C. § 501 and
`seeks damages under 17 U.S.C. § 504. Thus, the Court has subject matter jurisdiction pursuant to 28
`U.S.C. § 1338 (a). See Columbia Pictures Television v. Krypton Broadcasting of Birmingham, Inc.,
`106 F.3d 284 (9th Cir. 1997), rev'd on other grounds by Feltner v. Columbia Pictures Tel., Inc., 523
`U.S. 340 (1998).
`B.
`Personal Jurisdiction
`Before deciding whether to enter default judgment, the Court must assess whether it may
`exercise personal jurisdiction over the Defendant. See In re Tuli, 172 F.3d at 712 (raising issue of
`personal jurisdiction sua sponte is proper when considering motion for default judgment because
`judgment entered without personal jurisdiction over the parties is void). Here, Plaintiff does not
`allege Defendant’s state of incorporation or residence, but generally claims that Defendant
`“solicit[s], transact[s], and [is] doing business within the State of California.” See Docket No. 26
`(SAC ¶ 4). Plaintiff served the original complaint and the SAC on Defendant, upon its managing
`agent authorized to accept service, in Delaware. See Docket No. 31 (Exh. A) (“Return of Service”);
`Docket No. 33 (proof of service). Defendant therefore appears to be an out-of-state company.
`Personal jurisdiction over a nonresident defendant may be founded on either general or
`specific jurisdiction. Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 800-01 (9th Cir.
`2004). In this case, Plaintiff alleges only the existence of specific jurisdiction. See Docket No. 49
`(Supp. Brief at 1:26-2:9). The Ninth Circuit has set forth a three-pronged test to determine whether
`a party is susceptible to specific personal jurisdiction:
`
`(1)
`The non-resident defendant must purposefully direct his activities or
`consummate some transaction with the forum or resident thereof; or
`perform some act by which he purposefully avails himself of the privilege
`of conducting activities in the forum, thereby invoking the benefits and
`protections of its laws;
`the claim must be one which arises out of or relates to the defendant's
`forum-related activities; and
`the exercise of jurisdiction must comport with fair play and substantial
`justice, i.e. it must be reasonable.
`Brayton Purcell, LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (citation
`omitted).
`
`(2)
`(3)
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`Purposeful direction
`1.
`Where the underlying action is the tort of copyright infringement, the first prong of the
`specific jurisdiction test is satisfied by showing “purposeful direction,” as opposed to the
`“purposeful availment” analysis more commonly used in suits sounding in contract. See Brayton
`Purcell, 606 F.3d at 1128. “Purposeful direction” is evaluated using the three-part test taken from
`the Supreme Court’s decision in Calder v. Jones, 465 U.S. 783 (1984). Brayton Purcell, 606 F.3d at
`1128 (citation omitted). Under the Calder effects test, the defendant allegedly must have: (a)
`committed an intentional act; (b) expressly aimed at the forum state; and (c) causing harm that the
`defendant knows is likely to be suffered in the forum state. Brayton Purcell, 606 F.3d at 1128
`(citation omitted). To satisfy this test, the defendant need not have any physical contacts with the
`forum. Id. (citation omitted). Moreover, a showing that a defendant purposefully directed his
`conduct toward a forum state “usually consists of evidence of defendant’s actions outside the forum
`state that are directed at the forum, such as the distribution in the forum state of goods originating
`elsewhere.” Schwarzenegger, 374 F.3d at 803.
`Here, Plaintiff has sufficiently alleged that Defendant committed an “intentional act” by
`“reproducing, distributing and/or publicly displaying [Plaintiff's registered musical] works without
`proper approval or authorization of Plaintiff.” Docket No. 26 (SAC ¶ 15). According to Plaintiff,
`the Defendant “knew the infringed works belonged to Plaintiff and that [Defendant] did not have
`permission to exploit Plaintiff’s works.” Id. (SAC ¶ 16). This is sufficient to constitute an
`intentional act. See Brayton Purcell, 606 F.3d at 1128 (construing “‘intent’...as referring to an intent
`to perform an actual, physical act in the real world, rather than an intent to accomplish a result or
`consequence of that act”) (citation omitted).
`Next, Plaintiff has sufficiently alleged that Defendant’s conduct was expressly aimed at
`California. Plaintiff has alleged the following: Defendant knew that Berkeley, California is
`Plaintiff’s principal place of business;3 Defendant willfully and unlawfully reproduced and
`distributed musical works that Defendant knew were owned by Plaintiff; and Defendant was aware
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`3 Plaintiff attested at the December 9, 2010 hearing that her recording label, Mistletoe
`Music, is incorporated in California.
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`that such infringement was likely to cause harm in California. Docket No. 26 (SAC ¶¶ 4, 10, 14-16,
`18-19). In addition to alleging that Defendant solicits, transacts, and does business in California, see
`Docket No. 26 (SAC ¶ 4), Plaintiff further attested at the December 9, 2010 hearing that Defendant
`illegally sold her infringed musical works to consumers in California, including through stores such
`as WalMart, Barnes & Noble, and Amazon.com. The Court finds that these allegations satisfy
`“express aiming” by establishing that Defendant individually targeted Plaintiff and her business in
`California. See Brayton Purcell, 606 F.3d at 1129-30 (express aiming satisfied in copyright
`infringement case where Defendant knew Plaintiff’s business was located in Northern California,
`targeted Plaintiff’s business, and directly competed with Plaintiff because Defendant was aware its
`infringing website likely would be seen by Northern California residents); Mattel, Inc. v. MCA
`Records, Inc., 296 F.3d 894, 899 (9th Cir. 2002) (finding defendants’ conduct expressly aimed at
`California where pop music song from Europe was distributed in the United States including
`California, plaintiff’s principal place of business); IO Group, Inc. v. Jordon, 708 F. Supp. 2d 989,
`995 (N.D. Cal. 2010) (finding defendant’s actions were expressly aimed at California because
`defendant knew plaintiff maintains its principal place of business in California).
`Finally, based on Plaintiff’s allegations, the Court finds that Defendant caused harm that it
`knew was likely to be suffered in California. This last element of the Calder effects test is satisfied
`when a defendant’s intentional act has “foreseeable effects” in the forum state. Brayton Purcell, 606
`F.3d at 1131. In this case, as alleged by Plaintiff, it was foreseeable that she would suffer harm,
`including financial losses, from Defendant’s unauthorized reproduction and distribution of her
`musical works. See Docket No. 26 (SAC ¶¶ 20-21). Furthermore, it was foreseeable that some of
`this harm would occur in California, Plaintiff’s place of residence which Defendant allegedly knew
`was her principal place of business. See id. (SAC ¶¶ 1,10); Brayton Purcell, 606 F.3d at 1131
`(foreseeable that harm of copyright infringement would occur in forum state where plaintiff was
`known to reside). Thus, Plaintiff has sufficiently shown that Defendant purposefully directed its
`activity at California.
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`“Arises out of” Defendant’s forum activities
`2.
`Under the second prong of the specific jurisdiction analysis, the plaintiff’s claims must “arise
`out of” the defendant’s forum-related activities. Panavision Int’l, LP v. Toeppen, 141 F.3d 1316,
`1322 (9th Cir. 1998). In the Ninth Circuit, this requirement is met if the plaintiff would not have
`been injured “but for” the defendant’s forum-related conduct. Id. Here, Plaintiff has sufficiently
`demonstrated that Plaintiff would not have been injured, and her claim against Defendant would not
`have arisen, “but for” Defendant’s copyright infringement directed toward her in California, her
`principal place of business. See Brayton Purcell LLP v. Recordon & Recordon, 361 F. Supp. 2d
`1135, 1142-43 (N.D. Cal. 2005) (factor was “easily met” where defendant’s copyright infringement
`“reached into this District” and “affected [the plaintiff] in this District”), aff’d on other grounds, 606
`F.3d 1124 (9th Cir. 2010). Thus, the Court finds that Plaintiff has satisfied this requirement.
`3.
`Fair play and substantial justice
`The final prong of the test for specific jurisdiction assesses whether the exercise of personal
`jurisdiction comports with fair play and substantial justice – i.e., whether it is reasonable. Brayton
`Purcell, 606 F.3d at 1128. To determine whether the exercise of jurisdiction over a nonresident
`defendant comports with fair play and substantial justice, a court should balance the following
`factors: (1) the extent of defendant’s purposeful interjection into the forum state; (2) the burden on
`defendant of defending in the forum; (3) the extent of conflict with the sovereignty of defendant’s
`state; (4) the forum state’s interest in adjudicating the suit; (5) the most efficient judicial resolution
`of the controversy; (6) the importance of the forum to the plaintiff’s interest in convenient and
`effective relief; and (7) the existence of an alternative forum. See Core-Vent Corp. v. Nobel Indus.,
`11 F.3d 1482, 1487-88 (9th Cir. 1993). No single factor is dispositive. Id. at 1488. Moreover, upon
`a showing that the defendant purposefully directed its activities at forum residents, a presumption of
`reasonableness exists “which the defendant bears the burden of overcoming by presenting a
`compelling case that jurisdiction would be unreasonable.” Haisten v. Grass Valley Medical
`Reimbursement Fund, Ltd., 784 F.2d 1392, 1397 (9th Cir. 1986).
`In the case at bar, Defendant has not made an appearance and therefore has not set forth any
`argument, let alone a compelling case, to overcome the presumption of reasonableness.
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`Furthermore, taking the Core-Vent factors into consideration, the Court finds that on balance, they
`weigh in favor of exercising personal jurisdiction over Defendant. First, because Plaintiff is a
`California resident, California has a strong interest in adjudicating this dispute. See Microsoft Corp.
`v. Very Competitive Computer Prods. Corp., 671 F. Supp. 1250, 1256 (N.D. Cal. 1987) (California
`had strong interest in resolving dispute where California plaintiff alleged copyright infringement by
`Taiwanese defendants); Jordon, 708 F. Supp. 2d at 996 (California had strong interest in protecting
`plaintiff company which was headquartered in California). Second, nothing in the record establishes
`that it would be burdensome for Defendant to defend against this lawsuit in California. Third,
`because Plaintiff’s claims arise under federal copyright law, the exercise of jurisdiction in California
`does not implicate sovereignty concerns of Defendant’s state of residence. None of the remaining
`Core-Vent factors in the aggregate outweigh the reasonableness of exercising personal jurisdiction
`over Defendant. In sum, the Court finds specific jurisdiction over Defendant exists in this action.
`C.
`Service of Process
`Next, the Court must determine whether Plaintiff effected proper service of process on
`Defendant. It is fundamental that “[b]efore a federal court may exercise personal jurisdiction over a
`defendant, the procedural requirement of service of summons must be satisfied.” Omni Capital
`Int'l., Ltd. v. Rudolf Wolff & Co., 484 U.S. 97, 104 (1987), superseded by statute on other grounds,
`Futures Trading Practices Act of 1992, Pub. L. No. 102-546, § 211, 106 Stat. 3590, 3607-08 (1992).
`Rule 4(h) of the Federal Rules of Civil Procedure allows for two methods of service on
`domestic corporations. One method of service on a corporation is by “delivering a copy of the
`summons and of the complaint to an officer, a managing or general agent, or any other agent
`authorized by appointment or by law to receive service of process....” Fed.R.Civ.P. 4 (h)(1)(B).
`Such “delivery” must be by personal service. See In re TFT-LCD, Nos. M 07-1827 SI, C 09-1115
`SI, MDL. No. 1827, 2009 WL 4874872, at *2 (N.D.Cal. Oct. 6, 2009). Alternatively, a plaintiff may
`serve a defendant corporation by following the law of the state where the district court is located or
`of the state where service is made. See Fed.R.Civ.P. 4 (h)(1)(A) (referring to Rule 4 (e)(1), which
`provides for service pursuant to state law). Under California law, a summons may be served on a
`corporation by delivering a copy of the summons and the complaint “[t]o the person designated as
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`agent for service of process,” or “[t]o ...a general manager, or a person authorized by the corporation
`to receive service of process.” Cal. Code Civ. Proc. § 416.10 (a), (b).
`Here, Plaintiff effected service of the original complaint and summons by process server in
`Delaware on Melissa Wheeler, the “Managing Agent duly authorized to accept service.” See Docket
`No. 31 (Exh. A) (“Return of Service”).4 Thus, service of the original complaint was proper under
`either Fed.R.Civ.P. 4 (h)(1)(B) or Cal. Code Civ. Proc. § 416.10 (a) or (b). Plaintiff also effected
`service of the SAC by personal delivery to Melissa Wheeler. See Docket No. 33. Under the Federal
`Rules, service of the SAC was not required, as Defendant has not made an appearance and the SAC
`did not state new claims for relief against Defendant. See Fed.R.Civ.P. 5 (a)(2); Employee Painters’
`Trust v. Ethan Enter., Inc., 480 F.3d 993, 999 (9th Cir. 2007). Thus, the Court finds that service of
`the complaint upon Defendant was proper.
`D.
`Merits on Motion for Default Judgment
`A court may award a default judgment where the Clerk has previously entered the
`defendant’s default based upon a failure to plead or otherwise defend against an action.5
`Fed.R.Civ.P. 55 (b)(2); PepsiCo, Inc. v. Cal. Sec. Cans, 238 F. Supp. 2d 1172, 1174 (C.D. Cal.
`2002). Upon entry of default, the factual allegations of the complaint are accepted as true, except
`those relating to the amount of damages. TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915, 917-18
`(9th Cir. 1987). “The district court's decision whether to enter a default judgment is a discretionary
`one.” Aldabe v. Aldabe, 616 F.2d 1089, 1092 (9th Cir. 1980) (citations omitted). Factors that a
`court may consider in exercising this discretion include: (1) the possibility of prejudice to the
`plaintiff; (2) the merits of plaintiff’s substantive claim; (3) the sufficiency of the complaint; (4) the
`sum of money at stake in the action; (5) the possibility of a dispute concerning material facts; (6)
`whether the default was due to excusable neglect; and (7) the strong policy underlying the Federal
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`4 Plaintiff’s counsel clarified in supplemental briefing that the proof of service dated
`November 10, 2009, as indicated on its face, is the proof of service of the original complaint and
`summons. Plaintiff had mistakenly stated in her request to the Clerk to enter default that the
`November 10, 2009 proof of service was for the FAC.
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`5 Certain limitations exist on awarding default judgment against an infant, incompetent
`person, or person in the military. See Fed.R.Civ.P. 55 (b)(2); 50 U.S.C. App. § 521. Plaintiff
`adequately has set forth that those circumstances are not present here.
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`Rules of Civil Procedure favoring decisions on the merits. Eitel v. McCool, 782 F.2d 1470, 1471-72
`(9th Cir. 1986). After considering the Eitel factors, the Court finds that the majority of factors
`weigh in favor of default judgment.
`1.
`Possibility of prejudice to Plaintiff
`Under the first Eitel factor, the Court concludes that Plaintiff will be prejudiced if the Court
`denies Plaintiff’s request for default judgment. By defaulting, Defendant is deemed to have
`admitted the truth of Plaintiff’s allegations that her musical works were infringed by Defendant. See
`TeleVideo Sys., 826 F.2d at 917-18. Without entry of default judgment, Plaintiff would be denied
`the right to judicial resolution of her claim and would likely be without recourse to recover monetary
`relief to which she is entitled under the Copyright Act for the harm and damages Defendant has
`caused. See, e.g., Jordon, 708 F. Supp. 2d at 997.
`2.
`Sufficiency of complaint and likelihood of success on the merits
`The second and third Eitel factors “require that a plaintiff state a claim on which the
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`[plaintiff] may recover.” Philip Morris U.S.A., Inc. v. Castworld Products, Inc., 219 F.R.D. 494,
`499 (C.D. Cal. 2003) (citation omitted) (alteration in original). Here, Plaintiff has adequately
`alleged a claim for copyright infringement under the Copyright Act.
`In the Ninth Circuit, in order to establish a prima facie case of copyright infringement,
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`a plaintiff must show two elements: (1) ownership of the allegedly infringed material; and (2) the
`alleged infringer’s violation of at least one exclusive right granted to the copyright holder under
`section 106 of the Copyright Act. A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1013 (9th
`Cir. 2001). Before discussing each element, the Court will first address the preliminary issue of
`whether Plaintiff’s musical works – which she alleges were first published, recorded, and registered
`to her in the United Kingdom – are subject to protection under the Copyright Act.
`a.
`Protection of foreign works under the Copyright Act
`Section 501 of the Copyright Act provides that “[t]he legal or beneficial owner of an
`exclusive right under a copyright is entitled, subject to the requirements of section 411, 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) (emphasis added). Section 411 generally requires preregistration or registration
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`United States District Court
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`of the copyright claim as a prerequisite to a civil suit for copyright infringement of “any United
`States work.” See 17 U.S.C. § 411 (a). Thus, section 411 imposes a “precondition” to filing a claim
`under the Copyright Act. See Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1247 (2010).
`However, an exception to this precondition exists for foreign works; section 411 “expressly
`allows courts to adjudicate infringement claims involving unregistered works...where the work is not
`a U.S. work....” See Reed Elsevier, 130 S. Ct. at 1246 (emphasis in original). Specifically, “[n]o
`proof of registration is required if the work for which the plaintiff seeks protection has been
`authored in a foreign country covered by an applicable Convention.” Montblanc-Simplo GmbH v.
`Colibri Corp., 692 F. Supp. 2d 245, 256 (E.D.N.Y. 2010) (citations omitted) (alteration in original);
`see also Master Sound Int’l, Inc. v. Polygram Latino U.S., No. 98 Civ. 8468 (DLC), 1999 WL
`595661, at *2 (S.D.N.Y. Aug. 6, 1999) (proof of registration is not prerequisite for bringing
`copyright claim in federal court if the work originated in a country outside the United States that is a
`signatory to the Berne Convention). Such situations include where “the work is first published... in
`a foreign nation that, on the date of first publication, is a treaty party” or “the work is a sound
`recording that was first fixed in a treaty party.” See 17 U.S.C. §§ 104 (b)(2) and (b)(3).
`Thus, for present purposes, Plaintiff may seek protection of her musical works under the
`Copyright Act, without proof of United States registration, if her works were first “published”6 or
`first “fixed”7 in a “treaty party.”8 See generally, 3 Paul Goldstein, Goldstein on Copyright § 18.4 at
`18:21-22 (3d ed. 2010) (“[s]ection 104...provides the general framework for protection of foreign
`works in the United States”; “[t]he determination of whether the...Copyright Act protects a work of
`foreign origin must be made against the background of the laws and treaties in force at the time the
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`6 The Act defines “publication” as in part, the “distribution of copies or phonorecords of a
`work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C.
`§ 101.
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`7 According to the Act, “[a] work is ‘fixed’ in a tangible medium of expression when its
`embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently
`permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a
`period of more than transitory duration.” 17 U.S.C. § 101.
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`8 Under the Act, a “treaty party” is “a country or intergovernmental organization other than
`the United States that is a party to an international agreement[,]” such as the Berne Convention, the
`Universal Copyright Convention, or the Geneva Phonograms Convention. 17 U.S.C. § 101.
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`work was first published”); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
`5.09[A][2] at 5-78 (2010) (“a foreign claimant who can show that his nation has a bilateral copyright
`treaty with the United States, for example, or adheres to the Universal Copyright Convention, would
`seem to have established all that is required to obtain protection for his sound recordings”).
`In her Second Supplemental Declaration in support of her Motion for Default, Plaintiff
`attests as follows: the four musical works at issue were first published in the United Kingdom; they
`were originally performed by Plaintiff in Scotland as part of the production of an album, which was
`recorded in Scotland in 1994 and 1995; this album was released in March 1995; and the United
`Kingdom is a party to the Berne Convention. See Docket No. 54 (Second O'Reilly Supp. Decl. ¶¶ 2-
`4). At the December 9, 2010 hearing, Plaintiff further clarified that the recording of her four songs
`in Scotland in 1994 and 1995 was the first time they were recorded, or “fixed,” and the 1995 album
`release in the United Kingdom was the first time her four songs were distributed for sale to the
`public. The United Kingdom became a “treaty party” to several copyright conventions well before
`Plaintiff’s claimed dates of fixation and publication, including the Berne Convention, the Universal
`Copyright Convention (Geneva and Paris), and the Geneva Phonograms Convention.9 Furthermore,
`the United States adhered to the foregoing conventions prior to the dates when Plaintiff attests her
`works were first fixed and published.10
`Therefore, the Court finds that Plaintiff has adequately alleged the musical works for which
`she claims protection were first “published” or “fixed” in the United Kingdom, a treaty party to
`numerous copyright conventions to which the United States also adheres. Her allegations are
`sufficient to trigger protection of her foreign works under the Copyright Act.
`
`9 The United Kingdom became a treaty party to the Berne Convention in 1887; to the
`Universal Copyright Convention, Geneva and Paris, in 1957 and 1974, respectively; and to the
`Geneva Phonograms Convention in 1973. See 9 Melville B. Nimmer & David Nimmer, Nimmer on
`Copyright, App. 20, at 20-11 (2010) (reprinting International Copyright Relations of the United
`States Circular 38a (United States Copyright Office, July 2009)).
`10 The United States joined the Berne Convention in 1989; the Universal Copyright
`Convention,