`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`Case No. 11cv1557 BTM(RBB)
`ORDER DENYING MOTION FOR
`PARTIAL SUMMARY JUDGMENT
`
`SCORPIO MUSIC (BLACK SCORPIO)
`S.A. and CAN’T STOP PRODUCTIONS,
`INC.,
`
`v.
`
`VICTOR WILLIS,
`
`VICTOR WILLIS,
`
`Plaintiffs,
`
`Defendant.
`
`Counterclaimant,
`
` v.
`SCORPIO MUSIC (BLACK SCORPIO)
`S.A. and CAN’T STOP PRODUCTIONS,
`INC.,
`
`Counterclaim-Defendants,
`
`-and-
`
`HENRI BELOLO,
`Additional Counterclaim-Defendant.
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`Plaintiffs-Counterdefendants Scorpio Music (Black Scorpio) S.A. and Can’t Stop
`Productions, Inc. (“Plaintiffs”) have filed a motion for partial summary judgment. For the
`reasons discussed below, Plaintiffs’ motion is DENIED.
`
`I. PROCEDURAL BACKGROUND
`Defendant Victor Willis (“Willis”) is the original lead singer of the Village People.
`Plaintiff Scorpio Music S.A. (“Scorpio”) is a French corporation engaged in the business of
`publishing and otherwise commercially exploiting musical compositions. Plaintiff Can’t Stop
`Productions, Inc. (“Can’t Stop”) is the exclusive sub-publisher and administrator in the United
`States of musical compositions published and owned by Scorpio. Plaintiffs allege that
`between 1977 and 1979, they hired Willis to translate the lyrics of and/or create new lyrics
`for certain musical compositions which were owned and published in France by Scorpio.
`Copyright registrations for the 33 musical compositions (‘Compositions”) at issue, including
`the hit song “Y.M.C.A.,” credit Willis as being one of several writers. By way of Adaptation
`Agreements, Willis transferred his copyright interests in the subject Compositions to Can’t
`Stop. Can’t Stop thereupon assigned to Scorpio its rights in the lyrics.
`In January 2011, Willis served on Plaintiffs a notice of termination of his grants of
`copyright with respect to the Compositions. (Ex. A to FAC).
`On July 14, 2011, Plaintiffs commenced this lawsuit. In their original complaint,
`Plaintiffs challenged the validity of the notice of termination and sought a judgment declaring
`that Willis has no right, title, or interest in the copyrights to the Compositions, requiring Willis
`to withdraw the notice of termination, and enjoining Willis from making any claims to the
`Compositions’ copyrights.
`In an order filed on May 5, 2012, the Court granted Willis’s motion to dismiss. The
`Court held that, contrary to Plaintiffs’ contention, Willis could unilaterally terminate his grants
`under 17 U.S.C. § 203, because Willis granted his copyright interests in the Compositions
`separately from the other co-authors. However, the Court granted Plaintiffs leave to amend
`their complaint to seek declaratory relief regarding what percentage of copyright interest
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`Willis was entitled to receive back upon termination.
`On June 5, 2012, Plaintiffs filed their First Amended Complaint, seeking a judicial
`determination regarding the percentage of interest in the copyrights at issue that Willis can
`recover upon termination. Plaintiffs contend that the correct measure of Willis’s interest
`should be equal to the percentage Willis received in direct payments from BMI, a not-for-
`profit rights society which remits royalties directly to writers and publishers, or, at most,
`33.3% (representing an equal share if there are 3 authors).
`On August 1, 2012, Willis filed a Counterclaim. In his Counterclaim for Declaratory
`Relief, Willis claims that Henri Belolo did not contribute to the authorship of the lyrics or the
`music of 24 of the Compositions (“24 Disputed Works”) (Willis does not dispute that Morali
`composed the music). Willis claims that he is entitled to a declaratory judgment that the
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`notice of termination is valid, that he is a 50% owner of the copyrights to the 24 works, and
`that he is therefore entitled to recapture 50% of the copyright interests in each the works.
`On September 17, 2012, Plaintiffs filed a motion to dismiss Willis’s Counterclaim on
`the ground that it was barred by the three-year statute of limitations set forth in 17 U.S.C. §
`507(b), as well as the doctrine of laches. In an order filed on March 4, 2013, the Court
`denied Plaintiffs’ motion to dismiss. The Court found that there were triable issues of fact
`regarding when Willis’s claim to 50% ownership of the copyrights to the 24 Disputed Works
`was plainly and expressly repudiated.
`On March 29, 2013, Plaintiffs filed a motion for partial summary judgment on Willis’s
`Counterclaim, again arguing that Willis’s claim was barred by the statute of limitations. The
`Court held that the evidence submitted by Plaintiffs was not enough to establish a “plain and
`express repudiation” of Willis’s claim of 50% ownership. The Court denied the motion for
`partial summary judgment without prejudice and instructed Plaintiffs that they were not to file
`a new motion for partial summary judgment until Willis had a sufficient opportunity to conduct
`discovery.
`
` The other 9 songs were recorded by Patrick Juvet, who also composed the music.
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`Henri Belolo does not claim to be a co-author of these 9 works.
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`
`
`II. DISCUSSION
`Now that discovery has closed, Plaintiffs again seek partial summary judgment on
`Willis’s counterclaim. Plaintiffs contend that Willis’s claim to 50% ownership of the
`copyrights to the 24 Disputed Works is barred by the three-year statute of limitations as well
`as the doctrine of laches. As discussed below, the Court finds that there are triable issues
`of fact that preclude summary judgment with respect to the statute of limitations. As for
`Plaintiffs’ laches argument, the Court denies the motion without prejudice to refiling after the
`Supreme Court issues a decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946
`(2012), cert. granted, 134 S. Ct. 50 (2013).
`
`A. Statute of Limitations
`Under 17 U.S.C. § 507(b), “No civil action shall be maintained under the provisions
`of this title unless it is commenced within three years after the claim accrued.” As discussed
`in the Court’s prior orders, under Ninth Circuit law, “claims of co-ownership, as distinct from
`claims of infringement, accrue when plain and express repudiation of co-ownership is
`communicated to the claimant, and are barred three years from the time of repudiation.”
`Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996). The Ninth Circuit compared co-
`ownership of a copyright with a tenancy in common in real property, where “[a]n express or
`implicit ouster of a cotenant by an unequivocal act of ownership starts the adverse
`possession statute of limitations running.” Id. at 1370.
`The Court has considered the evidence submitted by Plaintiffs and concludes that
`there are triable issues of fact regarding when Plaintiff knew he had a claim for 50%
`ownership of the copyrights to the 24 Disputed Work and when such claim was expressly
`repudiated by Belolo. Plaintiffs argue that express repudiation of Willis’s claim occurred at
`the time the albums were released (1978-1980) because Willis admitted during his
`deposition that when each of the albums came out, he saw that Belolo was credited as a
`writer along with Morali and Willis. (Willis Dep. (attached to Besser Decl.) at 23:9-24:8.)
`However, Willis arguably did not know he even had a claim to 50% ownership until much
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`later, meaning there was no claim to repudiate at the time the albums were released.
`According to Willis, he was the sole author of the lyrics to the 24 Disputed Works.
`(Willis Decl. ¶ 2.) He did not know exactly what Belolo’s contribution to the works was
`because Belolo was not present when Willis, Morali, and Wilkie, a keyboard player, had
`writing sessions at a music studio. (Willis Dep. at 11:3-24.) Willis claims that he assumed
`that Belolo contributed to the creation of the musical elements of the 24 Disputed Works, or
`that Belolo and Morali, who did business together, agreed that Belolo would receive credit
`for the musical elements of the compositions. (Willis Decl. ¶ 5.) Willis’s Declaration is
`consistent with his deposition testimony in which he explained:
`I didn’t know what he was taking credit for. I just knew that his name was
`being credited as a writer and there was nothing that was given to me or
`shown me the breakdown to say that – that he was taking credit for doing –
`doing words and music. I just assumed that it had to be that he and Jacques
`had did some music together because they were friends, business partners,
`and roommates. I knew it didn’t have anything to do with my writing and lyrics.
`(Willis Dep. at 23:24-24:8.)
`Assuming the truth of Willis’s testimony, although Willis did not really know how Belolo
`contributed to the works, he assumed that Belolo was being credited in connection with the
`musical arrangement and accepted that he was one of three authors. Willis did not know
`that Belolo allegedly did nothing in connection with the creation of the works (and therefore
`had no valid authorship claim) until Belolo told Willis that he took credit for writing French
`lyrics to the songs, not for contributing to the musical arrangement. According to Willis, he
`did not know that Belolo was taking credit for lyrics until 2009, when Belolo’s attorneys wrote
`a letter stating that the lyrics for “Macho Man,” “YMCA,” “In the Navy,” and “Go West,” were
`originally written in French by Belolo. (Ex. 2 to Willis Decl.)
`Plaintiffs argue that Willis actually knew about Belolo’s claim to have written original
`French lyrics by 1989. Plaintiffs rely on a letter dated June 29, 1989, from Belolo to Willis’s
`attorney, Mr. Michael Leff, in which Belolo states that he was a “co-writer with Mr. J. Morali
`of a certain quantity of songs published by SCORPIO MUSIC, Mr. V. Willis was the English
`adaptor of some of them.” (Ex. C to Belolo Decl.) Willis claims that he never saw this letter.
`(Willis Dec. ¶ 11). Plaintiffs counter that since Leff was acting as Willis’s agent, his
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`knowledge should be imputed to Willis. It is true that a client is deemed to have knowledge
`of information that his attorney acquired within the scope of his representation and ought to
`have communicated to his client in the exercise of ordinary care and diligence. See Cal. Civ.
`Code § 2332; Freeman v. Superior Court, 44 Cal. 2d 533, 538 (1955). Here, however, the
`Court cannot say that Leff had a duty to convey the remark quoted above to Willis. Although
`the letter implies that Belolo or Morali wrote French lyrics to some unspecified songs, it does
`not expressly state so. Moreover, the import of the remark could have been easily
`overlooked because the context of the letter was a dispute regarding exploitation of the
`works in France and monies due to Willis, not copyright ownership. The remark was made
`as part of Belolo’s protestations that he was just a co-author, not Willis’s manager or advisor,
`and that Willis’s complaints should be directed toward Can’t Stop, with whom Willis had
`contracted. Accordingly, the Court will not grant summary judgment on the basis of this stray
`remark.
`Plaintiffs also rely on Willis’s deposition testimony regarding a telephone conversation
`he had with Morali in 1989. According to Willis, during the conversation, Morali stated that
`he was getting ready to sue Belolo and wanted Willis to join him. (Willis Dep. at 20:17-18.)
`Morali also stated that Belolo was a “crook” and a “fraud” and that he regretted allowing
`Belolo to be credited as a creator of the songs. (Willis Dep. at 20:19-23; 22:15-19.) Willis
`stated:
`[W]hat Jacques basically was saying to me was that whatever it was, this is
`the first time I had any idea that – that I had been affected, per se, by his
`name being on there and that I would be getting back – probably getting back
`whatever I was due from whatever it was that had been taken from me when
`– from Mr. Belolo’s name being on there.
`(Willis Dep. at 38:11-18.)
`During oral argument, Plaintiffs’ counsel also pointed to portions of the deposition
`where Willis made remarks to the effect that Willis knew that Belolo had nothing to do with
`the creation of the songs and that the songs were created by just himself and Morali. For
`example, Willis said, “I told Mr. Morali that, yes, I would – I would join on because I knew that
`Mr. Belolo had nothing to do with the creating of the songs because he was never there
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`when Jacques and I did it.” (Willis dep. 22-23-23:1.) He also testified: “I didn’t assume
`anything as far as what Mr Belolo had done with the songs. I knew Mr. Belolo hadn’t done
`anything as far as the creation of the songs. So I was confused about why his name was
`even on there, but I didn’t – I didn’t – I didn’t inquire.” (Willis dep. 32:4-8.)
` Although Willis’s deposition testimony can be viewed as showing that Willis knew
`that Belolo did not contribute to creation of the works and therefore had no valid claim to
`copyright ownership, an argument can be made for a different interpretation. Willis may
`have been injecting his current feelings of certainty regarding the illegitimacy of Belolo’s
`claim to authorship into some of his testimony regarding his past thoughts and actions. At
`other times during the deposition, Willis said that he knew that Belolo was not present when
`he and Morali were putting together the songs, so he was “confused” about why Belolo was
`credited, and assumed that Morali and Belolo had worked on the music together and/or
`Morali had agreed to give him music writing credit. (Willis dep. at 23:9-18; 23:24-24:8;
`35:24-36:12).
`According to Willis, during the 1989 telephone conversation, Morali confirmed to Willis
`that he had agreed to let Belolo be credited. (Willis Dep. 23:16-19.) However, an agreement
`that Belolo could receive credit does not mean that Belolo did not actually contribute in some
`way to the music. Because it is not always clear whether a contribution is significant enough
`to render the contributor an author, contributors to a work may enter into an agreement
`regarding who will be credited as authors. Willis did not testify that Morali said that Belolo
`made no contribution to the music, just that he regretted allowing him to be credited. 2
`Morali’s comments about Belolo being a “crook” and a “fraud” do not appear to relate
`to Belolo being credited in connection with the works, but, rather, with Belolo’s alleged failure
`to compensate Morali and Willis for exploitation of the works in France. Morali’s lawsuit
`alleged that Belolo failed to obtain his consent and failed to compensate him in connection
`
` At one point in his deposition, Willis stated that Morali “regretted that he had ever
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`let him take credit for – for– on the songs as being one of the creators of the works that he
`and I had done solely together.” (Willis Dep. 20:6-9.) Arguably, the “solely together” remark
`is Willis’s present day commentary regarding the creation of the compositions, not what
`Morali himself said in 1989.
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`with the release of a “Best of” album in France, which included re-mixed versions of the
`original Village People Recordings. (Willis Decl. ¶ 13.) Willis’s French lawsuit alleged
`violation of his rights of publicity and misappropriation of his voice and image in connection
`with promotional music videos for the “Best of” album, which used a different singer lip-
`syncing to Willis’s recordings. (Id.; Ex. E to Belolo Decl.) Neither lawsuit concerned whether
`Belolo was actually an author and owner of copyright.
`When Willis stated that after he talked to Jacques, he realized for the first time that
`he had been “affected, per se, by his name being on there,” and that through the lawsuit, he
`would be getting back whatever it was that was taken from him, Willis was not necessarily
`talking about copyright ownership. Willis could have meant that as a credited author, Belolo
`felt like he could do whatever he wanted with the works without answering to Willis or Morali.
`As already discussed, Willis’s lawsuit in fact concerned Willis’s publicity rights and use of his
`voice and image.
`Willis’s deposition testimony is not so compelling that no reasonable trier of fact could
`find other than that Willis knew of his claim to 50% copyright ownership in 1989.
`Furthermore, even assuming that Willis knew that he had a claim to 50% ownership in 1989,
`it is unclear from the record if, how, and/or when express repudiation of the claim took place.
` Plaintiffs introduce evidence that Willis was aware, prior to 2009, that Belolo was
`openly taking credit for the lyrics. However, this evidence is contradicted by Willis. For
`example, Belolo attaches to his declaration a 2001 email allegedly from Willis in which Willis
`states: “Also I enjoyed reading your interview on the internet, the one where you told you had
`written the lyrics on the songs asking me mildly for help in correcting some of your grammar.
`Very enlightening!” (Ex. J to Belolo Decl.) Willis denies writing or sending this email and
`claims he never had an email account with that email address. (Willis Decl. ¶ 16.) Belolo
`also claims that in 2006, during the course of an interview, he explained to Karen Huff the
`song-writing process for the Village People songs and how he and Morali wrote the songs,
`to which Willis subsequently provided English lyrics. (Belolo Decl. ¶ 29.) In 2007, Ms. Huff
`married Willis. (Belolo Decl. ¶ 30.) Mrs. Willis (Huff) states in a declaration that Belolo did
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`not talk to her about the writing of the songs recorded by the Village People. (K. Willis Decl.
`¶ 2.)
`
`In sum, there are triable issues of material fact with respect to whether, more than
`three years prior to the commencement of this suit, Belolo plainly and expressly repudiated
`a claim by Willis to 50% ownership of the copyright interests in the 24 Disputed Works.
`Accordingly, Plaintiffs are not entitled to summary judgment based on the statute of
`limitations.
`
`B. Laches
`In addition to arguing that the counterclaim is barred by the three-year statute of
`limitations, Plaintiffs also argue that the counterclaim is barred by the equitable doctrine of
`laches. The standard for laches is different from that governing the accrual of copyright
`ownership claims. Therefore, it is possible that an ownership claim would be within the
`three-year statute of limitations yet still barred by laches.
`The Ninth Circuit has held that laches may be asserted as a defense to an action
`seeking a declaration of co-authorship (resulting in co-ownership) of a copyrightable work.
`Jackson v. Axton, 25 F.3d 884, 887 (9th Cir. 1994), overruled on other grounds by Fogerty
`v. Fantasy, Inc., 510 U.S. 517, 531-32 (1994). To prevail on the affirmative defense of
`laches, a defendant must prove (1) an unreasonable delay by the plaintiff; and (2) prejudice.
`Kling v. Hallmark Cards, Inc., 225 F.3d 1030, 1036 (9th Cir. 2000).
`However, the Circuits are split on whether and to what extent the defense of laches
`may be asserted in copyright cases. Other Circuits do not allow it, restrict the remedies to
`which it can apply, or only allow it in exceptional circumstances. See Petrella v. Metro-
`Goldwyn-Mayer, Inc., 695 F.3d 946, 958 (9th Cir. 2012) (W. Fletcher, concurring). In
`Petrella, the Ninth Circuit held that laches barred the claims of copyright infringement, unjust
`enrichment, and accounting that Paula Petrella, heir to writer Frank Peter Petrella, brought
`against defendants, who produced and distributed the movie Raging Bull. In October, the
`Supreme Court granted the Petition for Writ of Certiorari filed by Petrella. Petrella v. Metro-
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`Goldwyn-Mayer, Inc., 134 S. Ct. 50 (2013). In her Petition, Petrella presents the question:
`“Whether the nonstatutory defense of laches is available without restriction to bar all
`remedies for civil copyright claims filed within the three-year statute of limitations prescribed
`by Congress, 17 U.S.C. § 507(b).” 2013 WL 1868355. Oral argument is currently scheduled
`for January 21, 2014.
`Because the availability and/or scope of the defense of laches in copyright cases is
`uncertain and before the Supreme Court, the Court denies Plaintiffs’ motion without
`prejudice to the extent it is based on the defense of laches. Plaintiffs may file a new motion
`for partial summary judgment on the ground of laches after the Supreme Court issues its
`opinion in Patrella.
`
`III. CONCLUSION
`For the reasons discussed above, Plaintiffs Motion for Partial Summary Judgment
`[Doc. 80] is DENIED. To the extent the motion is based on the defense of laches, the
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`motion is DENIED WITHOUT PREJUDICE.
`IT IS SO ORDERED.
`DATED: December 26, 2013
`
`BARRY TED MOSKOWITZ, Chief Judge
`United States District Court
`
` Because the motion is denied, the Court need not reach the issue of whether
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`Willis’s claim of 50% copyright ownership, raised as a defense to Plaintiffs’ action, may be
`barred by the statute of limitations
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