Case 1:14-cv-05075-LGS Document 63 Filed 04/15/15 Page 1 of 11
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`14 Civ. 5075 (LGS)
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`OPINION AND ORDER
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`CHAUNCEY MAHAN,
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`Plaintiff,
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`-against-
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`ROC NATION, LLC, et al.,
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`Defendants.
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`LORNA G. SCHOFIELD, District Judge:
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`This action arises from Plaintiff Chauncey Mahan’s work as a sound engineer on three
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`albums, published by Defendant Roc-A-Fella Records (“Roc-A-Fella”) and featuring Defendant
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`Shawn Carter. The Amended Complaint seeks a declaratory judgment that Mahan shares
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`copyright interests in the albums and in related, unpublished recordings. Plaintiff also seeks
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`damages for conversion and trespass to chattel arising from an incident in which Defendants
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`allegedly contacted the Los Angeles Police Department, resulting in the seizure of equipment
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`owned by Plaintiff. Defendants Roc-A-Fella and Carter move to dismiss the Amended
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`Complaint. For the following reasons, their motion is granted.
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`BACKGROUND
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`The facts below are taken from the Amended Complaint and assumed to be true for the
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`purposes of this motion.
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`Plaintiff Chauncey Mahan is a sound engineer and music programmer who has
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`collaborated with a number of prominent music artists. Defendant Roc-A-Fella is a record label
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`founded in 1995 by Defendant Shawn Carter, a recording artist popularly known as Jay Z.
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`Defendant Roc Nation (“Roc Nation”) is a “full-service entertainment company,” also founded by
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`Carter, engaged in talent management, music publishing, touring, merchandising, film and
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`04/15/2015
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`television and new business ventures.
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`From August 1, 1999, to November 15, 2000, at Carter’s request, Roc-A-Fella
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`commissioned Mahan as an independent contractor to create sound recordings. During this
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`period, Mahan contributed to 41 sound recordings in collaboration with Carter and Roc-A-Fella.
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`These 41 recordings were sold as part of three albums (the “Albums”), and 31 of these featured
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`performances by Carter himself (the “Carter Recordings”). Another ten recordings (the “Beanie
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`Sigel Recordings”) featured a non-party rapper popularly known as Beanie Sigel. Mahan is
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`credited and thanked as a contributor in the materials included in the recordings’ CDs.
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`Mahan’s collaborative relationship with Carter and Roc-A-Fella ended in November
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`2000. At the time, Mahan possessed computer hard drives and storage peripherals that contained
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`“unpublished joint works” -- that is, records and mixes produced with Carter and Roc-A-Fella
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`that were not ultimately released to the public. Mahan also had in his possession removable
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`storage containing both unpublished recordings and album versions of songs. In November 2000,
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`Mahan wrote to executives at Roc-A-Fella to inform them that “he was in possession of multi-
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`track recordings made in collaboration” with Roc-A-Fella. Mahan never received a response.
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`On April 17, 2014, counsel for Roc Nation was told to meet Mahan at his storage unit.
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`There, they spent several hours inventorying “valuable items” in Mahan’s possession. The
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`Amended Complaint alleges that, afterwards, Defendants instructed counsel for Roc Nation to
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`call the local police and convince them that Mahan should be arrested for the possession of stolen
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`property. On April 18, 2014, the Los Angeles Police Department seized items from Mahan’s
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`storage unit. Mahan was not arrested or charged with any crimes related to the incident.
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`On May 6, 2014, counsel for Mahan participated in a telephone conference with counsel
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`for Roc Nation. During this call, Mahan’s counsel asserted a “joint copyright ownership interest”
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`in the sound recordings retrieved from Mahan’s storage unit.
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`On July 8, 2014, Mahan filed this action. The Amended Complaint alleges five claims,
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`including four claims for declaratory judgment pursuant to the Copyright Act, 17 U.S.C. § 101 et
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`seq. Mahan seeks a declaratory judgment that, although Roc-A-Fella may have registered
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`copyrights to the Albums as “compilation works,” Mahan possesses copyright interests in the
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`Albums’ individual tracks. Mahan also seeks judicial declarations that he shares joint copyright
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`ownership interests with Carter in the Carter Recordings and with Roc-A-Fella in the Beanie
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`Sigel Recordings. Mahan also seeks a declaratory judgment that he has copyright ownership
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`interests -- and that Defendants have none -- in unpublished recordings, including “Original B-
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`Side mixes and untitled dubplates.” Mahan’s fifth claim alleges that Roc-A-Fella, Carter and Roc
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`Nation committed conversion and trespass to chattels by “initiating a ‘sham’ criminal proceeding
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`against Mahan,” resulting in the seizure of Mahan’s chattels -- specifically, removable storage
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`media, computers, hard drives and an audio player -- by the Los Angeles Police Department.
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`STANDARD
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`On a motion to dismiss, the Court accepts as true all well-pleaded factual allegations and
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`draws all reasonable inferences in favor of the non-moving party. Hooks v. Forman, Holt,
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`Eliades & Ravin, LLC, 717 F.3d 282, 284 (2d Cir. 2013). To withstand dismissal, a pleading
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`“must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible
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`on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v.
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`Twombly, 550 U.S. 544, 570 (2007)). “Threadbare recitals of the elements of a cause of action,
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`supported by mere conclusory statements, do not suffice.” Id. Rule 8 of the Federal Rules of
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`Civil Procedure “requires factual allegations that are sufficient to ‘give the defendant fair notice
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`of what the . . . claim is and the grounds upon which it rests.’” Anderson News, L.L.C. v. Am.
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`Media, Inc., 680 F.3d 162, 182 (2d Cir. 2012) (quoting Twombly, 550 U.S. at 555).
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`On a motion to dismiss, the court may consider the complaint, “[d]ocuments that are
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`attached to the complaint or incorporated in it by reference,” “document[s] upon which the
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`complaint solely relies and which is integral to the complaint,” and “matters of which judicial
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`notice may be taken.” Garanti Finansal Kiralama A.S. v. Aqua Marine & Trading Inc., 697 F.3d
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`59, 63 n.4 (2d Cir. 2012) (citations and internal quotation marks omitted).
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`DISCUSSION
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`I.
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`DECLARATORY JUDGMENT CLAIMS
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`As Plaintiff’s declaratory judgment claims are time-barred under the Copyright Act, these
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`claims must be dismissed.
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`A.
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`Applicable Law
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`“Civil actions under the Copyright Act are subject to a three-year statute of limitations.”
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`Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996) (citing 17 U.S.C. § 507(b) (“No civil action shall
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`be maintained under the provisions of this title unless it is commenced within three years after the
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`claim accrued.”)). “A cause of action accrues when a plaintiff knows or has reason to know of
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`the injury upon which the claim is premised.” Id.; accord Psihoyos v. John Wiley & Sons, Inc.,
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`748 F.3d 120, 124-25 (2d Cir. 2014) (reaffirming Merchant). “A defendant’s express assertion of
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`adverse ownership or a plain and express repudiation of plaintiff’s ownership . . . will trigger the
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`accrual of the statute of limitations.” Brand v. RMM, No. 10 CIV. 0287 (AJP), 2011 WL
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`1496344, at *4 (S.D.N.Y. Apr. 18, 2011) (internal quotation marks omitted); accord Kwan v.
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`Schlein, 634 F.3d 224, 228 (2d Cir. 2011) (“[A]ny number of events can trigger the accrual of an
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`ownership claim, including an express assertion of sole authorship or ownership.” (internal
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`quotation marks and alteration omitted)). “For example, a claim can accrue: when a [work] is
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`published without the alleged co-author’s name on it; when alleged co-authors are presented with
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`a contract identifying the defendant as the sole owner and copyright holder; or when alleged co-
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`owners learn they are entitled to royalties that they are not receiving.” Gary Friedrich Enters.,
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`LLC v. Marvel Characters, Inc., 716 F.3d 302, 317 (2d Cir. 2013) (citations and internal
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`quotation marks omitted); accord id. (noting that alleged “author does not need to bring suit until
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`there has been an ‘express repudiation’ of [his] claim” to ownership of work). In addition, an
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`alleged “co-author knows that he or she jointly created a work from the moment of its creation.”
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`Merchant, 92 F.3d at 56.
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`B.
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`Application
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`Plaintiff’s declaratory judgment claims must be dismissed as time barred, as it is clear
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`from the face of the Amended Complaint and the parties’ submissions that these claims accrued
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`more than three years before this action was commenced.
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`Plaintiff filed this action on July 8, 2014. Thus, if Plaintiff’s co-ownership claim accrued
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`before July 8, 2011 -- three years before the commencement of this suit -- Plaintiff’s claims for
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`declaratory judgment under the Copyright Act are time barred. Plaintiff’s claims are untimely for
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`at least three independent reasons.
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`First, Plaintiff’s claims are time barred as a result of Roc-A-Fella’s registrations with the
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`United States Copyright Office. Roc-A-Fella recorded its copyrights in the Albums in three
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`separate registrations, dated February 28, 2000; April 12, 2000; and December 11, 2000. None of
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`these registrations mentioned Plaintiff as a joint copyright holder. The Copyright Act provides
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`that “[r]ecordation of a document in the Copyright Office gives all persons constructive notice of
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`the facts stated in the recorded document.” 17 U.S.C. § 205(c). Under the Copyright Act, the
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`three-year statute of limitations begins to run when a “copyright certificate listing [defendants] as
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`authors [i]s filed.” Margo v. Weiss, No. 96 CIV. 3842 (MBM), 1998 WL 2558, at *5 (S.D.N.Y.
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`Jan. 5, 1998), aff’d, 213 F.3d 55 (2d Cir. 2000). Accordingly, no later than December 11, 2000,
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`Plaintiff had constructive notice of Roc-A-Fella’s assertion that it exclusively held the Albums’
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`copyrights.
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`Second, the copyright notices printed on the Albums’ packaging also should have given
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`Plaintiff reason to know of his alleged injury. The packaging on the Albums -- one released in
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`1999, and two released in 2000 -- lists only Roc-A-Fella as the Albums’ copyright holder.
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`“Public distribution of the work at issue bearing copyright notices in the name of the defendant(s)
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`which exclude the plaintiff claiming to own the subject copyright has been held to create
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`sufficient notice to begin the running of the statute of limitations.” Ortiz v. Guitian Bros. Music
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`Inc., No. 07 CIV. 3897, 2008 WL 4449314, at *3 (S.D.N.Y. Sept. 29, 2008); accord DeCarlo v.
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`Archie Comic Publ’ns, Inc., 11 Fed. App’x 26, 29 (2d Cir. 2001) (summary order) (holding that
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`statute of limitations began to run when plaintiff “read the copyright notice in [comic book]
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`which gave the sole copyright” to defendant’s subsidiary). The copyright notices on the Albums’
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`packaging here, therefore, provide further evidence that Plaintiff had reason to know of his
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`alleged injury in 2000, if not earlier.
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`Third, the absence of any royalties sent to Plaintiff also gave him reason to know of his
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`injury. As the Complaint itself alleges, the Albums were all commercial successes -- two of the
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`Albums debuted at number one on the Billboard 2000 album chart and the remaining Album
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`peaked at number five on the same chart. The limitations period begins to run when “alleged co-
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`owners learn they are entitled to royalties that they are not receiving.” Gary Friedrich, 716 F.3d
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`at 317; accord Santa-Rosa v. Combo Records, 471 F.3d 224, 228 (1st Cir. 2006) (“[W]e cannot
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`think of a more plain and express repudiation of co-ownership than the fact that [defendant]
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`openly, and quite notoriously, sold [plaintiff’s] records without providing payment . . . .”).
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`Plaintiff asserts that a reasonable person would not necessarily have reason to know that royalties
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`were owed to him in this situation. Considering the depth of Plaintiff’s experience in the music
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`industry and the substantial commercial success of the Albums, this assertion strains credulity.
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`See Santa-Rosa, 471 F.3d at 228 (“[I]t is hard to believe that a singer of [plaintiff’s] stature would
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`have been unaware that [defendant] was selling his recordings and thus claiming ownership over
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`them until three years before this action was commenced.”).
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`Plaintiff’s remaining arguments likewise fail.
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`Plaintiff argues that the limitations period begins to run only when there has been an
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`express repudiation of the plaintiff’s ownership claim and that express repudiation requires (a)
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`private repudiation, (b) public repudiation and (3) implied repudiation. Plaintiff, in a related
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`vein, argues that express repudiation requires a written communication sent directly by the
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`defendant to the plaintiff. These arguments, however, misconstrue the case on which they rely.
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`In Gary Friedrich, 716 F.3d at 317-20, the Second Circuit discussed private, public and implied
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`repudiation as alternative forms of “express repudiation” and concluded that summary judgment
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`was inappropriate because there were genuine issues of material fact concerning each. Indeed, as
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`discussed above, Gary Friedrich lists several events that could trigger the limitations period,
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`including events where there is no direct communication between the parties. See id. at 317
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`(listing publication of book “without the alleged co-author’s name on it” as a trigger); DeCarlo,
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`11 Fed. App’x 26, 29-30 (2d Cir. 2001) (citing plaintiff’s knowledge of a television show’s
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`national broadcast and merchandising, and listing defendant as sole copyright holder, as evidence
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`that the limitations period had begun).
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`Plaintiff also argues that, even if Roc-A-Fella held copyrights to the Albums, it is not the
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`exclusive copyright holder for each and every song on the Albums. This argument is
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`unpersuasive. Courts in this Circuit have repeatedly held that the protection of a copyright
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`registration extends to all original constituent parts of a compilation. See Cooley v. Penguin Grp.
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`(USA) Inc., 31 F. Supp. 3d 599, 608 (S.D.N.Y. 2014) (“The Copyright Act grants the author of a
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`derivative work copyright protection only in whatever increment of original expression the author
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`contributes, but does not disturb the ownership of the copyright or the rights of its holder in
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`respect of the underlying work.”); E. Am. Trio Products, Inc. v. Tang Elec. Corp., 97 F. Supp. 2d
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`395, 417 (S.D.N.Y.), dismissed, 243 F.3d 559 (Fed. Cir. 2000); cf. Bryant v. Media Right Prods.,
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`Inc., 603 F.3d 135, 140 (2d Cir. 2010) (“An album falls within the Act’s expansive definition of
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`compilation.”). Here, the songs are constituent parts of the Albums, and Plaintiff does not
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`challenge that the songs are anything but original creations. In other words, he does not claim
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`that Defendants incorporated into the Albums any pre-existing songs in which he held the
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`exclusive copyright. Accordingly, Roc-A-Fella’s copyrights extend to all of the songs in the
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`Albums.
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`Plaintiff also contends that, even if Roc-A-Fella holds the copyrights to the final versions
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`of the Albums, it does not own the rights to any unpublished recordings created in connection
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`with the Albums’ production. This argument is also incorrect. Courts have “consistently
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`rejected” the “notion that a copyright owner is required to separately register every draft or
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`version of an evolving work, as “[s]uch a requirement would be wasteful and impractical.”
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`Peterson v. Kolodin, No. 13 Civ. 793, 2013 WL 5226114, at *6 (S.D.N.Y. Sept. 10, 2013);
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`accord Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 284 (4th Cir. 2003) (adopting the view that
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`registration of final work is “sufficient to permit an infringement action on the underlying parts”),
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`overturned on other grounds by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010). Indeed,
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`“registration is not a condition to obtaining copyright,” but “copyright automatically inheres in a
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`work the moment it is ‘created,’ which is to say ‘when it is fixed in a copy or phonorecord for the
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`first time.’” 2-7 Nimmer on Copyright § 7.16. Roc-A-Fella correctly asserts, therefore, that it
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`owns the copyrights to the unpublished works as “derivative” or “underlying” parts of the
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`Albums.
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`Plaintiff’s reliance on Stone v. Williams, 970 F.2d 1043, 1051 (2d Cir. 1992), is also
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`unavailing. Plaintiff cites Stone for the proposition that the three-year limitations period is
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`inapplicable here, but Stone presented vastly different facts. Stone dealt with an infringement
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`claim where the plaintiff’s copyright ownership was already “properly established” -- not a claim
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`in which a plaintiff seeks to establish co-ownership. Stone, 970 F.2d at 1051. The Second
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`Circuit subsequently noted, “Stone stands for the narrow proposition that, in certain situations, the
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`statute of limitations will not be applied to defeat the copyright co-ownership claim of an author’s
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`relative accruing more than three years before the lawsuit where uncertainty surrounded the
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`relative’s status as a member of the author’s family.” Merchant, 92 F.3d at 56. Stone is therefore
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`inapposite.
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`Plaintiff’s remaining arguments assert that (1) statutes of limitations are unconstitutional,
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`(2) this Court lacks “subject matter jurisdiction” to apply any applicable statutes of limitation and
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`(3) Defendants lack “standing to interpose” any applicable statutes of limitation. These
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`arguments are deemed frivolous and therefore fail.
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`Accordingly, Plaintiff’s declaratory judgment claims are dismissed.
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`II.
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`CONVERSION AND TRESPASS TO CHATTELS
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`As Plaintiff cannot overcome the absolute privilege accorded to Defendants’
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`communications with the Los Angeles Police Department, Plaintiff’s claim for conversion and
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`trespass to chattels is dismissed.
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`“A federal court sitting in diversity or adjudicating state law claims that are pendent to a
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`federal claim must apply the choice of law rules of the forum state.” Licci ex rel. Licci v.
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`Lebanese Canadian Bank, SAL, 672 F.3d 155, 157 (2d Cir. 2012). Accordingly, New York
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`choice-of-law rules apply here.
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`Although “New York courts now apply a ‘paramount interest’ test for choice of law
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`questions, under which the law of the jurisdiction having the ‘greatest interest in the litigation’ is
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`applied, lex loci delicti remains the general rule in tort cases to be displaced only in extraordinary
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`circumstances.” Hadar v. Concordia Yacht Builders, Inc., 886 F. Supp. 1082, 1093 (S.D.N.Y.
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`1995) (citation and internal quotation marks omitted); accord Schultz v. Boy Scouts of Am., Inc.,
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`65 N.Y.2d 189, 195 (1985) (“Under traditional rules, the law of the place of the wrong governs
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`all substantive issues in the action . . . .”). Here, as the Complaint focuses on the Los Angeles
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`Police Department’s confiscation of Plaintiff’s property, California is the place of the alleged
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`wrong. California law therefore applies.
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`Section 47(b) of the California Civil Code creates “a privilege that bars liability in tort for
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`the making of certain statements.” Hagberg v. Cal. Fed. Bank FSB, 81 P.3d 244, 248 (Cal. 2004)
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`(citing Cal. Civ. Code § 47(b) (barring civil actions for damages for communications made “[i]n
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`any (1) legislative proceeding, (2) judicial proceeding, (3) in any other official proceeding
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`authorized by law, or (4) in the initiation or course of any other proceeding authorized by law and
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`reviewable pursuant to [statutes governing writs of mandate]”)). The California Supreme Court
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`has applied this “unqualified” bar to all tort actions, except for malicious prosecution, based on
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`communications in which “a citizen contacts law enforcement personnel to report suspected
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`criminal activity.” Id. at 364. This “unqualified privilege” applies even to allegedly false police
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`reports, because other remedies -- such as criminal prosecution for perjury -- exist to deter such
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`false or malicious communications. Id. at 364, 372.
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`This unqualified privilege applies to the allegedly false statements made by Defendants to
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`the Los Angeles Police Department. Plaintiff cites no authority under California law to the
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`contrary. Accordingly, Plaintiff has failed to state a claim for conversion or trespass to chattel,
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`and this claim must be dismissed.
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`CONCLUSION
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`For the foregoing reasons, Defendants Carter and Roc-A-Fella’s motion is GRANTED.
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`The Clerk of Court is respectfully directed to close all outstanding motions and to terminate the
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`case.
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`SO ORDERED.
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`Dated: April 15, 2015
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`New York, New York
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