Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 1 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 1 of 28
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`BIG EAST ENTERTAINMENT,
`
`INC.,
`
`Plaintiff,
`
`— against —
`
`ZOMBA ENTERPRISES,
`
`INC.,
`
`Defendant.
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ __X
`
`A P P E A R A N C E S:
`
`04 Civ. 10008 §RWS)
`
`O P I N I 0 N
`
`CINQUE & CINQUE
`Attorneys for Plaintiff
`845 Third Avenue, Suite 1400
`New York, NY 10022
`By:
`JAMES P. CINQUE, ESQ.
`
`Q; Counsel MANATT PHELPS & PHILLIPS
`
`
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 1 of 28
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`BIG EAST ENTERTAINMENT,
`
`INC.,
`
`Plaintiff,
`
`— against —
`
`ZOMBA ENTERPRISES,
`
`INC.,
`
`Defendant.
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ . _ _ _ _ _ __X
`
`A P P E A R A N C E S:
`
`04 Civ. 10008 §RWS)
`
`O P I N I 0 N
`
`CINQUE & CINQUE
`Attorneys for Plaintiff
`845 Third Avenue, Suite 1400
`New York, NY 10022
`By:
`JAMES P. CINQUE, ESQ.
`
`Q; Counsel MANATT PHELPS & PHILLIPS
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 2 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 2 of 28
`
`Sweet, D.J.,
`
`The defendant Zomba Enterprises,
`
`Inc.
`
`(”Zomba" or the
`
`“Defendant") has moved pursuant
`
`to Rule 56, Fed. R. Civ. P.,
`
`for
`
`summary judgment dismissing the complaint of plaintiff Big East
`
`Entertainment, Inc.
`
`("Big East" or the "Plaintiff") alleging causes
`
`of action for copyright
`
`infringement and an accounting. Big East
`
`has cross—moved for summary judgment.
`
`For the reasons set forth
`
`below,
`
`the motion of Zomba for summary judgment is granted, and the
`
`cross—motion of Big East is denied.
`
`This fifteen year old controversy involves the rights to
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 3 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 3 of 28
`
`The Facts
`
`The material facts are set forth in Zomba's Statement
`
`Pursuant to Local Civil Rule 56.1 and Big East's Local Civil Rule
`
`56.1 Statement and are not in dispute except as noted below.
`
`The Parties
`
`Big East
`
`is a record distribution corporation wholly
`
`owned by Jack Allen ("Allen"). According to Big East, it is the
`
`successor in interest to B—Boy Records,
`
`Inc., Rock Candy Records
`
`and Rock Candy Music, all of which were wholly owned by Allen.
`
`A
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 4 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 4 of 28
`
`The Agreements In The Prior Litigation
`
`On May 20, 1986,
`
`the members of BDP signed a recording
`
`contract with Rock Candy Records
`
`("Rock Candy"),
`
`a
`
`record
`
`distribution corporation owned by Allen ("1986 Artist Agreement").
`
`Pursuant
`
`to the
`
`1986 Artist Agreement, Rock Candy
`
`obtained ownership of the copyrights in the master recordings of
`
`any songs recorded by BDP under the contract and in exchange Rock
`
`Candy was to pay BDP royalties.
`
`While under
`
`contract with Rock Candy,
`
`BDP wrote,
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 5 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 5 of 28
`
`Allen is aware that Kamarra claims to be a part—owner of Rock Candy
`
`and other companies affiliated with Allen.
`
`The 1986 Artist Agreement stated in relevant part that:
`
`all musical compositions written and/or composed by [BDP]
`which are recorded by [BDP] pursuant
`to this Agreement
`shall be co—published between [BDP's] publishing company
`to be designated and [Rock Candy's] music publishing
`affiliate to be designated pursuant
`to a co—publishing
`agreement entered into simultaneously herewith.
`
`(1986 Artist Agreement,
`
`fl 8).
`
`The 1986 Artist Agreement does not contain any terms
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 6 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 6 of 28
`
`Parker does not recall ever entering into a co—publishing
`
`agreement with Rock Candy.
`
`Parker gave all the agreements he had in his possession
`
`in 1987 to Jay D. Kramer ("Kramer"), his counsel at that time, who
`
`does not recall ever seeing a co—publishing agreement. Kramer has
`
`testified that
`
`throughout all his years of communications with
`
`Allen on behalf of Parker, Allen never once claimed that this co-
`
`publishing agreement was ever executed, or even existed. No letter
`
`on behalf of Big East or any other company affiliated with Allen
`
`mention this purported co—publishing agreement.
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 7 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 7 of 28
`
`album (Complt. ll 13, 25, 29, 31(b) and 32) and requested that the
`
`copyrights in the Criminal Minded compositions be returned to them,
`
`and alleged that Rock Candy was a "co—publisher of
`
`the musical
`
`compositions on plaintiffs’ recordings."
`
`(Complt.
`
`fl 29).
`
`On November 19,
`
`1987,
`
`the lawsuit was
`
`resolved in a
`
`settlement agreement
`
`(the "1987 Settlement Agreement“) between
`
`Parker and the other members of BDP on the one hand,
`
`and "Jack
`
`Allen, William Kamarra, Ray Wilson,
`
`individually and d/b/a J & B
`
`Management Company,
`
`Rock Candy Records,
`
`Rock Candy Music,
`
`Sweetheart Distribution Corp.,
`
`and
`
`Jam City
`
`One
`
`Stop,"
`
`(collectively,
`
`the "Allen Defendants").
`
`Rock Candy Music and
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 8 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 8 of 28
`
`exclusive
`an
`into
`entering
`contemporaneously
`are
`recording agreement and our sister company [defendant]
`Zomba Enterprises,
`Inc.
`is entering into an exclusive
`publishing agreement with Lawrence Parker p/k/a Boogie
`Down Productions ("the Artist“) and you [Jack Allen and
`his companies] and Artist are releasing the other from
`their
`respective
`obligations
`under
`the
`exclusive
`agreement dated May 20, 1986 between you and also from
`the litigation commenced in relation thereto between the
`Artist and you (index no.: 87/25130)
`
`(Ex.
`
`5 to Allen Decl.).
`
`The 1987 Settlement Agreement provided that
`
`the Allen
`
`Defendants "shall retain the right
`
`to distribute and exploit
`
`the
`
`recordings
`
`embodying
`
`the performances
`
`of
`
`[BDP]
`
`and musical
`
`compositions written.by [BDP] performed in the recordings listed in
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 9 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 9 of 28
`
`licenses full right,
`
`title and interest
`
`in the tradename Boogie
`
`Down Productions" and only allowed the Allen Defendants to use the
`
`name "in connection with the recordings listed in Schedule ‘A’
`
`annexed hereto."
`
`Schedule A lists nine songs from the "Criminal
`
`Minded" album and two other songs ——
`
`"The P is Free," and "Bride
`
`I-II
`
`Parker and Zomba, an affiliate of ZRC, entered into a co-
`
`publishing agreement
`
`on November 23,
`
`1987
`
`("Zomba Publishing
`
`Agreement”) which provided that Zomba possessed all Parker's
`
`ownership interests and stated that
`
`the musical
`
`compositions
`
`embodied on the "Criminal Minded" album were committed by a written
`
`agreement to a third party (Zomba Publishing Agreement 1 1(a)).
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 10 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 10 of 28
`
`copyrights;
`
`that we couldn't submit a copyright because it was
`
`already owned by Zomba."
`
`Since approximately 1991, Allen wrote several letters to
`
`Zomba and had several conversations with Zomba representatives
`
`regarding his companies’ purported rights in the "Criminal Minded"
`
`compositions.
`
`(Allen Dep. at 96).
`
`In a letter dated July 16,
`
`1992, Allen writes that he is aware that Zomba
`
`is claiming to
`
`"control[] 100% of the publishing on all of the songs of the album
`
`"Criminal Minded,"
`
`that Rock Candy and B—Boy "still own the 2"
`
`master" of this album, and requested that Zomba inform them about
`
`any sales of the recordings.
`
`(Hayes Dec. Ex. E).
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 11 of 28
`
`Case 1:04—cv—10008—RWS Document 29 Filed 09/28/06 Page 11 of 28
`
`behalf of Big East claiming that pursuant
`
`to the 1987 Settlement
`
`Agreement, Big East "retained all rights" in the "Criminal Minded"
`
`album,
`
`including "copyrights"
`
`(Hayes Dec. Ex. G), and that Zomba
`
`"has been named as Publisher to the "Criminal Minded" albums."
`
`(;gL)
`
`and that Zomba pay "what
`
`is duly owed"
`
`to her client and
`
`advises that she and her clients "do not wish to go into litigation
`
`on these issues."
`
`In 2000, an attorney wrote a letter on behalf of Bun Bun
`
`Music, another corporation wholly—owned by Allen,
`
`to the American
`
`Society of Composers, Authors and Publishers ("ASCAP") requesting
`
`that ASCAP release any "royalties currently being held in suspense"
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 12 of 28
`
`Case 1:04—cv—10008—RWS Document 29 Filed 09/28/06 Page 12 of 28
`
`Copyright registration certificate PA 934-688 issued to
`
`B—Boy Records are for the "Criminal Minded" compositions, entitled:
`
`"Criminal Minded," "Poetry," "South Bronx," "9mm Goes Bang," "Word
`
`From Our Sponsor,"
`
`"Elementary,"
`
`"§ope Beat,"
`
`"Remix For
`
`P
`
`Is
`
`Free," "The Bridge Is Over," and "Super—Hoe." According to Allen,
`
`B—Boy Records was merged into Big East, another company wholly-
`
`owned by Allen as successor in interest
`
`to the other companies
`
`owned by Allen and the umbrella company in control.
`
`(Hayes Dec. Ex
`
`L, p. 68).
`
`According to Allen, he owned all of the stock in Rock
`
`Candy and B—Boy Records, which were dissolved when they merged into
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 13 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 13 of 28
`
`Allen and that each corporation, Big East, Rock Candy, and B-Boy,
`
`has its own stock.
`
`(Allen Dep. 69-70).
`
`The Sumary Judgment Standard
`
`Under Fed. R. Civ. P. S6(c), summary judgment is mandated
`
`where there exists no "genuine" issue of "material" fact; a dispute
`
`over
`
`irrelevant or unnecessary facts will not preclude summary
`
`judgment.
`
`_§§ Anderson v. Libert Lobb
`
`Inc., 477 U.S. 242, 247-
`
`48
`
`(1986).
`
`"The moving party may obtain summary judgment by
`
`showing that little or no evidence may be found in support of the
`
`nonmoving party's case." Gallo v. Prudential fiesidential Serv.,
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 14 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 14 of 28
`
`Corp. v. Chrisha Creations Ltd., 04 Civ. 1074, 2004 WL 1406075, at
`
`*6 (S.D.N.Y. June 23, 2004)
`
`(internal quotations omitted).
`
`If the
`
`non—moving' party "fail[s]
`
`to make
`
`a sufficient
`
`showing on an
`
`essential element of [its] case with respect to which [it] has the
`
`burden of proof," then "the moving party is entitled to judgment as
`
`a matter of law." Celotex, 477 U.S. at 322-23.
`
`The Statute Of Limitations Bars The Claim Of Big East
`
`Civil actions brought pursuant
`
`to the Copyright Act are
`
`subject
`
`to a three-year statute of
`
`limitations.
`
`17 U.S.C.
`
`§
`
`507(b).
`
`Under settled Second Circuit precedent, plaintiffs are
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 15 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 15 of 28
`
`chain of title is invalid and that plaintiff is the sole owner of
`
`the Copyrights").
`
`Copyright ownership claims accrue "when a plaintiff knows
`
`or has
`
`reason to know of
`
`the injury upon which the claim is
`
`premised.” Merchant, 92 F.3d at 56; see Barksdale, 211 F.R.D. at
`
`244.
`
`Thus,
`
`this Court has ruled that "[a]n express assertion of
`
`sole authorship or ownership will start the copyright statute of
`
`limitations running." Netzer v. Continuity Graphic Assocs., Inc.,
`
`963 F. Supp. 1308, 1315 (S.D.N.Y. 1997).
`
`Allen learned that
`
`Zomba
`
`claimed ownership of
`
`the
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 16 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 16 of 28
`
`East claimed that under the 1987 Settlement Agreement, Big East
`
`"retained all rights" in the "Criminal Minded" album,
`
`including
`
`copyrights.
`
`(Hayes Dec. Ex. G).
`
`Since 1991, Kramer repeatedly
`
`advised Allen that neither Allen nor his
`
`companies
`
`own
`
`the
`
`copyrights in the "Criminal Minded" compositions. Because Big East
`
`failed to file this action until December 2004, more than thirteen
`
`years after its sole shareholder and predecessors in interest knew
`
`of the injury upon which the claim is premised,
`
`the action is time-
`
`barred.
`
`ggg Minder Music Ltd., 1999 WL 820575, at *2
`
`(dismissing
`
`copyright
`
`action as
`
`time—barred when
`
`"plaintiff
`
`could have
`
`investigated the merits of defendants’ ownership claim" seven years
`
`before
`
`instituting an action); Barksdale,
`
`211 F.R.D.
`
`at
`
`245
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 17 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 17 of 28
`
`Although plaintiff attempts to portray its claim as one
`for an ongoing infringement, it has been established that
`the
`statute of
`limitations
`cannot
`be defeated by
`portraying an action as
`one
`for
`infringement when
`copyright ownership rights are the true matter at issue.
`See Netzer v. Continuit V. Graphic Assocs., Inc., 963 F.
`Supp. 1308, 1315 (S.D.N.Y. 1997)
`. .. Plaintiff's claim
`accrued when it knew or had reason to know of the injury
`upon_which the claim is premised. See Stone v. Williams,
`970 F.2d 1043 (2d Cir. 1992).
`
`Minder Music, 1999 WL 82075, at *2.
`
`Although Allen asserted an ownership claim on behalf of
`
`Rock Candy at various times after 1991,
`
`including in a letter to
`
`Zomba in 1995, he failed to act within the three—year statute of
`
`limitations.
`
`In Minder Music Ltd., supra,
`
`the court declared that:
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 18 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 18 of 28
`
`Big East also attempts to avoid the bar of the statute of
`
`limitations by claiming that
`
`this case
`
`is controlled by the
`
`decision in Carell v. Shubert Organization, Inc., 104 F. Supp. 2d
`
`236 (S.D.N.Y. 2000). That decision (which resulted from a motion
`
`to dismiss, not a summary judgment motion) permitted the creator of
`
`copyrightable material
`
`to sue for copyright
`
`infringement even
`
`though she sat on her rights for more than a decade.
`
`In Carell,
`
`supra,
`
`the plaintiff had a valid Copyright registration in certain
`
`designs for makeup on the performers of the musical "Cats."
`
`The
`
`defendants in that case denied her claim to sole ownership of the
`
`copyrights in those designs, but, unlike Zomba here, never filed a
`
`copyright
`
`registration of
`
`their
`
`own
`
`for
`
`the makeup designs
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 19 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 19 of 28
`
`Cir. 1996). Courts in this district have extended this
`rule to parties seeking a declaration of sole ownership.
`See, e.g., Minder Music Ltd. v. Mellow Smoke Music Co.,
`No. 98 Civ. 4496 (Ass). 1999 WL 82075, at *2
`(S.D.N.Y.
`Oct.
`14,
`1999)
`(applying the three-year
`limitations
`period to plaintiff's assertion of sole ownership); Aday
`v. Sony Music Entertainment, Inc., No. 96 Civ. 0991, 1997
`WL 598410, at *3—5 (S.D.N.Y. Sept. 25, 1997)
`(same); Fort
`Knox Music Inc. v. Baptiste, 47 F. Supp. 2d 481, 483-84
`(S.D.N.Y. 1999),
`remanded on other grounds (applying the
`three—year
`limitations period in declaratory judgment
`action to bar defendant songwriter from asserting sole
`ownership). Copyright claims begin to accrue when the
`plaintiff "knows or should have known of the injury on
`which the claim is premised." Merchant, supra, 92 F.3d
`at 56.
`
`Carell, 104 F. Supp. 2d at 248-49.
`
`Big East has based its infringement claim entirely upon
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 20 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 20 of 28
`
`infringement. Eden Toys,
`
`Inc. v. Florelee Undergarment Co., Inc.,
`
`697 F.2d 27, 32 (2d Cir. 1982); see also Pannonia Farms,
`
`Inc. v.
`
`USA Cable, 03 Civ. 7841, 2004 WL 1276842, at *5
`
`(S.D.N.Y. June 8,
`
`2004)
`
`(dismissing copyright action for lack of standing because
`
`plaintiff corporation did not
`
`own
`
`the copyrights at
`
`issue).
`
`Further,
`
`the Copyright Act requires that an assignment of copyright
`
`ownership must be memorialized in writing and signed by the
`
`parties.
`
`17 U.S.C.
`
`§ 204(a).
`
`Big East was not a party to the 1986 Artist Agreement or
`
`the
`
`1987 Settlement Agreement
`
`and never
`
`received a written
`
`assignment of copyrights.
`
`The only entities with copyright
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 21 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 21 of 28
`
`interest
`
`and lacked standing to sue on behalf of
`
`its sister
`
`corporation,
`
`even if sister corporation "was merely a
`
`shell
`
`corporation, wholly controlled by [New York corporation],
`
`this
`
`Court will not pierce the corporate veil"); Disston Co. v. Sandvik
`
`Aktiebolag, 589 N.Y.S.2d 442 (N.Y. App. Div.
`
`lst Dep't 1992)
`
`("A
`
`corporation cannot pierce its own corporate veil to benefit either
`
`the parent or a subsidiary").
`
`In its opposition to Zomba's summary judgment motion and
`
`in support of
`
`its cross-motion, Big East
`
`for
`
`the first
`
`time
`
`contended that B—Boy Records and Rock Candy were merged into Big
`
`East in 2002 and no longer exist as separate entities.
`
`(Def's. Br.
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 22 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 22 of 28
`
`Associates,
`
`Inc.,
`
`No.
`
`85 Civ. 9929, 1989 U.S. Dist. LEXIS 7104
`
`(S.D.N.Y. June 23, 1989).
`
`In addition, at his deposition on October 6, 2005, Allen
`
`testified that Rock Candy Records, Rock Candy Music and B—Boy
`
`Records,
`
`Inc. all still exist as separate companies:
`
`Q.
`
`A.
`
`Q.
`
`Those entities, Rock Candy Records, Rock Candy
`Music and B—Boy Records, continue to exist, don't
`they?
`
`Yeah. But they're controlled by Big East.
`
`I see. And when you say they're controlled by Big
`East could you tell me what you mean?
`In other
`words,
`is there control because of some ownership
`or is there some agreement?
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 23 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 23 of 28
`
`(Allen Dep. at 68-70).
`
`In any
`
`case,
`
`the
`
`copyright
`
`registration for
`
`the
`
`compositions at
`
`issue is in the name of B—Boy Records.
`
`No
`
`assignment of copyright from B—Boy Records (or any other entity) to
`
`Big East has been adduced.
`
`Given the requirements of law cited above, contradicted
`
`only by Allen's assertions which are contradictory and unsupported
`
`by documentary evidence, Big East has failed to present uncontested
`
`material facts to establish its standing.
`
`Its cross—motion for a
`
`declaration of copyright violation is therefore denied.
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 24 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 24 of 28
`
`The provision allows
`
`the Allen Defendants
`
`to keep
`
`royalties that
`
`they otherwise would owe the members of BDP as a
`
`result of the Allen Defendants distributing recordings contained on
`
`the "Criminal Minded" album.
`
`"[A]n agreement concerning royalties
`
`does not constitute a ‘transfer of copyright ownership’ within the
`
`meaning of
`
`[the Copyright Act]."
`
`Para's—June,
`
`921 F. Supp. at
`
`1160.
`
`"Assignments of interest in royalties have no relationship
`
`to the existence, scope, duration or identification of a copyright,
`
`nor
`
`to 'rights under a copyright.“'
`
`Broadcast Music,
`
`Inc. v.
`
`Hirsch, 104 F.3d 1163, 1166 (9th Cir. 1997)
`
`(agreement assigning
`
`royalties was not transfer of copyright)
`
`(quoting 17 U.S.C.
`
`§ 106
`
`(listing rights under a copyright)).
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 25 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 25 of 28
`
`Minded" album.
`
`The only language in the 1987 Settlement Agreement
`
`that grants "full right, title, and interest" in any intellectual
`
`property rights is in Paragraph Five, which grants to the members
`
`of BDP the right to use the trade name BDP.
`
`Big East also has claimed that the Allen Defendants did
`
`have a 50% interest in the "Criminal Minded" compositions because:
`
`1)
`
`the 1986 Artist Agreement
`
`itself grants Rock Candy that
`
`interest,
`
`and 2)
`
`BDP
`
`and. Rock. Candy" executed a co—publishing
`
`agreement which was lost in a fire at Allen's office.
`
`(Complt.
`
`fl
`
`4). However,
`
`the 1986 Artist Agreement does not grant Rock Candy
`
`copyright ownership in BDP's compositions. The agreement provides,
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 26 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 26 of 28
`
`Big East has contended that the 1987 Settlement Agreement
`
`and the 1987 Zomba Co—Publishing Agreement must be read together as
`
`though they were one transaction, and it seeks to rely on exclusion
`
`of third—party rights described in Schedule 2, claiming that such
`
`rights must refer to Rock Candy.
`
`(Big East Memo in Opp., pp. 10-
`
`14).
`
`However,
`
`the parties are not the same,
`
`the subject matter
`
`is different as are the dates of execution.
`
`In This Is Me, Inc. v.
`
`Taylor, 157 F.3d 139 (2d Cir. 1998), relied on by Big East, all of
`
`the contracts at issue were related solely to the appearance of the
`
`actress Cicely Tyson in a Broadway play and were therefore involved
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 27 of 28
`
`
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 27 of 28
`
`V. Twin Disc., Inc., 527 F.2d 767 (2d Cir. 1975); Williams V. Mobil
`
`Oil Corp., 445 N.Y.S.2d 1'72
`
`(N.Y. App. Div. 2d Dep’t 1981).
`
`No explanation is given by Parker or Zomba
`
`to the
`
`inclusion of the "Criminal Minded" compositions on Schedule 2 of
`
`the Co—Publishing Agreement.
`
`Paragraph
`
`1(a)
`
`defined
`
`the
`
`compositions listed on Schedule 1, which has not been provided,
`
`"which have not been heretofore committed by written agreement to
`
`any third party music publisher, it being understood that all such
`
`musical
`
`compositions which have been heretofore committed by
`
`written agreement to any third party are set forth in Schedule 2."
`
`(Allen Dec., Ex 6).
`
`It is noted that Paragraph 9(e)
`
`represented
`
`
`
`Case 1:04-cv-10008-RWS Document 29 Filed 09/28/06 Page 28 of 28
`
`Case 1:O4—cv—10008—RWS Document 29 Filed 09/28/06 Page 28 of 28
`
`Conclusion
`
`For the reasons set forth above,
`
`the motion of Zomba to
`
`dismiss the complaint of Big East is granted and the cross—motion
`
`of Big East is denied.
`
`It is so ordered.
`
`New York, NY
`
`September
`
`-7’?
`
`, 2006
`
`BERT W. s EET
`
`U.S.D.J.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
