Case 1:20-cv-00316-RGA Document 87 Filed 09/28/20 Page 1 of 5 PageID #: 1229
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`IN THE UNITED STATES DISTRICT COURT FOR
`THE DISTRICT OF DELAWARE
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`Civil Action No. 20-cv-316-RGA
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`TERRY WILLIAMS,
`Plaintiff,
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`v.
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`ATLANTIC RECORDING
`CORPORATION A/K/A ATLANTIC
`RECORDS, ELEKTRA
`ENTERTAINMENT GROUP, INC. A/K/A
`ELEKTRA RECORDS, WARNER MUSIC
`INC. A/K/A WARNER MUSIC GROUP,
`INC., WARNER MUSIC GROUP
`CORPORATION and RESERVOIR MEDIA
`MANAGEMENT, INC.,
`Defendants.
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`MEMORANDUM
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`Before me are Defendants’ motion to dismiss pursuant to Rules 12(b)(2) and 12(b)(6) of
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`the Federal Rules of Civil Procedure (D.I. 49), Plaintiff’s motion to file a second amended
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`complaint (D.I. 79), and Defendants’ motion to file a sur-reply (D.I. 84). For the following
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`reasons, Defendants’ motion to dismiss is granted without prejudice under Rule 12(b)(6),
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`Plaintiff’s motion to file a second amended complaint is denied, and Defendants’ motion to file a
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`sur-reply is dismissed as moot. Plaintiff is granted leave to amend his complaint with a legal
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`theory that would entitle him to relief.
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`I.
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`BACKGROUND
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`Pro se Plaintiff Terry Williams brought this action against Defendants alleging
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`unauthorized licensing and/or sale of musical works whose copyright is jointly owned by
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`Plaintiff and Melissa Arnette Elliot. (D.I. 1, Ex. B). Defendants Atlantic Recording
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`Corporation, Elektra Entertainment Group, Inc., Warner Music Inc., Warner Music Group
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`Corporation, and Reservoir Media Management, Inc. are record labels.
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`Plaintiff originally filed a complaint for breach of contract, unjust enrichment, for an
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`accounting, and constructive trust against Defendants and others, including Melissa Arnette
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`Elliot and various record labels in the Court of Common Pleas for Philadelphia County. (D.I. 1,
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`Ex. B). Defendants removed the action to federal court, asserting federal question jurisdiction
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`under 28 U.S.C. § 1331. (D.I. 1). Plaintiff filed a motion to remand (D.I. 12), which was denied
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`on the basis that Plaintiff’s claims were preempted by the Copyright Act. (D.I. 30). Plaintiff
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`subsequently filed an amended complaint alleging copyright infringement and contributory
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`infringement of the joint musical works in question. (D.I. 44). Defendants then filed a motion to
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`dismiss the amended complaint pursuant to Rules 12(b)(2) and 12(b)(6). (D.I. 49). Melissa
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`Arnette Elliot filed a separate motion to dismiss (D.I. 50), which was granted. (D.I. 69).
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`The case against Defendants Atlantic Recording Corporation, Elektra Entertainment
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`Group, Inc., Warner Music Inc., Warner Music Group Corporation, and Reservoir Media
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`Management, Inc. was transferred to this Court from the Eastern District of Pennsylvania on
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`March 3, 2020. (D.I. 71). Plaintiff filed a motion for leave to file a second amended complaint
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`to add a defendant and copyright registration numbers as well as to clarify facts and incorporate
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`exhibits and references. (D.I. 79). Defendants moved for leave to file a sur-reply in connection
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`with the briefing on the motion for leave to amend. (D.I. 84). These more recent motions (D.I.
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`79; D.I. 84) and the motion to dismiss (D.I. 49) are now fully briefed and ripe for decision.
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`II.
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`LEGAL STANDARD
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`A Rule 12(b)(6) motion may be granted only if, accepting the well-pleaded allegations in
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`the complaint as true, and viewing them in the light most favorable to the complainant, a court
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`concludes that those allegations “could not raise a claim of entitlement to relief . . . .” Bell Atl.
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`Corp. v. Twombly, 550 U.S. 544, 558 (2007). Because Plaintiff proceeds pro se, the pleadings
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`are "to be liberally construed, and [the] pro se complaint, however inartfully pleaded, must be
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`held to less stringent standards than formal pleadings drafted by lawyers.” Erickson v. Pardus,
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`551 U.S. 89, 94 (2007) (citations and quotations omitted).
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`In order to state a claim for copyright infringement, Plaintiff must allege “(1) ownership
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`of a valid copyright; and (2) unauthorized copying of original elements of the plaintiff's work.”
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`Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir.
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`2002). In order to establish contributory copyright infringement, Plaintiff must at a minimum
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`establish “a third party directly infringed the plaintiff's copyright.” Leonard v. Stemtech Int’l
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`Inc., 834 F.3d 376, 387 (3d Cir. 2016). For jointly owned copyrights, a license granted by a
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`single co-owner will authorize use of the work because “each co-author is entitled to convey
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`non-exclusive rights to the joint work without the consent of his co-author. The only caveat is
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`that the licensing author must account to his co-author for his fair share of profits from any non-
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`exclusive license. If a co-author attempts to convey exclusive rights, his co-author can convey
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`the same exclusive rights—in effect, such an exclusive license becomes a non-exclusive license.”
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`Brownstein v. Lindsay, 742 F.3d 55, 68 (3d Cir. 2014) (citations omitted). In addition to the
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`ability to license a joint work, “a co-author can transfer or assign the rights to his ownership
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`interest in the joint work, but this does not affect the ownership rights of his co-author.” Id.
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`Cases in other circuits reach the same conclusion. “[E]ach joint author has the right to use
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`or to license the work as he or she wishes, subject only to the obligation to account to the other
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`joint owner for any profits that are made.” Thomson v. Larson, 147 F.3d 195, 199 (2d Cir.1998).
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`“Joint authors co-owning copyright in a work are deemed to be tenants in common, with each
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`having an independent right to use or license the copyright, subject only to a duty to account to
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`the other co-owner for any profits earned thereby.” Community for Creative Non–Violence v.
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`Reid, 846 F.2d 1485, 1498 (D.C.Cir.1988) (citations and quotations omitted). Consequently, the
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`use of a jointly owned copyright by a third-party is authorized when at least one copyright co-
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`owner has licensed or assigned his/her interest in the work to the third party. An authorized use
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`of a copyright cannot amount to an infringement. See Dun & Bradstreet Software Servs., 307
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`F.3d at 206.
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`III.
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`DISCUSSION
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`Plaintiff alleges that Defendants infringed his copyrights when the co-owner and former
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`Defendant Melissa Arnette Elliot sold or licensed the copyrights in question to Defendants
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`without Plaintiff’s consent. (D.I. 44 at 1). As a co-owner, Elliot would have had the unilateral
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`right to authorize the license and/or sale of her interest in the copyrights co-owned with Plaintiff
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`without his consent. See Brownstein, 742 F.3d at 68. As a result, exploitation of the musical
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`works in question by Defendants under Elliot’s direction would have been an authorized use that
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`could not constitute copyright infringement. See Dun & Bradstreet Software Servs., 307 F.3d at
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`206. Because all the acts of infringement alleged by Plaintiff were performed with the assistance
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`or under the direction of the copyright co-owner, Plaintiff has not alleged Defendants’
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`unauthorized use such as would be required to state a claim for copyright infringement.
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`Plaintiff argues that the copyrights in question were either licensed or sold to Defendants
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`(D.I. 44 at 1), yet whether Elliot authorized a license or a sale of her interest is irrelevant. The
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`licensee or assignee of Elliot’s joint interest would have been authorized to exploit the works,
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`and consequently, would have been incapable of infringing Plaintiff’s copyright. While Elliot
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`would not have been able to unilaterally grant exclusive licenses to works jointly owned with
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`Plaintiff, an attempt to do so would have effectively resulted in a non-exclusive license that
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`would have nonetheless authorized Defendants’ use of the copyrights. See Brownstein, 742 F.3d
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`at 68. Plaintiff’s proposed second amended complaint does not allege a set of facts that could
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`amount to Defendants’ unauthorized use of the musical works in question. As a result, Plaintiff
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`has not stated a claim for copyright infringement.
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`However, as a co-owner, Plaintiff would be entitled to a share of any profits generated by
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`the copyrights in question from the other co-owner. Therefore, if Defendants have become the
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`co-owners of Plaintiff’s copyrights through an assignment from Melissa Arnette Elliot,
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`Defendants are subject to the obligation of accounting to Plaintiff for any profits made. See
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`Brownstein, 742 F.3d at 68. Yet, any accounting to which Plaintiff may be entitled is not
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`cognizable in copyright infringement because the co-owners of Plaintiff’s copyrights are
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`authorized to use the works without Plaintiff’s consent. See Thomson, 147 F.3d at 199.
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`IV.
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`CONCLUSION
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`For the reasons set forth above, I grant Defendants’ motion to dismiss without prejudice.
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`Plaintiff’s motion to file a second amended complaint is denied. Defendants’ motion for leave to
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`file a sur-reply is dismissed as moot. Given that Plaintiff proceeds pro se, he is granted leave to
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`amend his complaint with a legal theory that would entitle him to relief.
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`A separate order will be entered.
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`_/s/ Richard G. Andrews_ _
` United States District Judge
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