Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 1 of 11. PageID #: 124
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
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`CASE NO. 1:11 CV 0664
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`JUDGE PATRICIA A. GAUGHAN
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`MEMORANDUM OF OPINION
`AND ORDER
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`CHRISTOPHER MCCANTS,
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`Plaintiff,
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` v.
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`ORRIN LYNN TOLLIVER, JR., et al.,
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`Defendants.
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`Introduction
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`On April 1, 2011, plaintiff pro se Christopher McCants filed this action against Orrin
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`Lynn Tolliver, Jr., James Louis McCants d/b/a Jimi Mac Music & OG Music, Cherry Lane Music
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`Publishing Company, Inc., Will.i.am Music, Inc.1, Will Adams and UMG Recordings (collectively,
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`the “Defendants”). Plaintiff asserts this action arises under the “United States Copyright Act, 17
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`U.S.C. § 506.”2 He claims the Defendants never secured his permission to use his musical
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`composition, “I Need a Freak.” Plaintiff seeks an Order directing Defendants to cease payment of
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` 1The company is incorporated as “will.i.am music, inc.;” therefore, the Court will refer to it as
`such.
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` 2No private right of action exists under this provision of the copyright statute authorizing
`imposition of a fine for fraudulent copyright notice. See Donald Frederick Evans and Associates,
`Inc. v. Continental Homes, Inc., 785 F.2d 897 (11th Cir.1986). Later in the complaint, however,
`Plaintiff references 17 U.S.C. § 106, which does provide civil relief. Therefore, the Court will
`address his claims under 17 U.S.C. § 106.
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 2 of 11. PageID #: 125
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`any monies, funds, royalties, fees and benefits. He also asks for an accounting of all gains, profits
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`and benefits derived through Defendants’ alleged infringement of Plaintiff’s work; and, finally,
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`damages and attorney fees.
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` Defendants BMG Rights Management, as successor-in-interest to Cherry Lane
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`Music, Will Adams, and will.i.am music, inc. filed a Motion to Dismiss pursuant to Federal Civil
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`Rule 12(b)(6) on April 29, 2011. Six days later, defendant UMG Recordings filed a Notice of
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`Joinder in the April 29, 2011 Motion to Dismiss. Plaintiff opposed the Motion, the Moving
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`Defendants replied and Plaintiff filed a sur-reply on July 5, 2011. He also moved this Court to enter
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`a Default Judgment against defendant Orrin Lynn Tollier, Jr.
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` On June 28, 2011, Plaintiff filed a Motion for Injunctive Relief (Dkt.#18) seeking to
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`enjoin BMG as successor-in-interest to Cherry Lane and “non-defendants Royalty Network and BMI
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`Corporation” from releasing escrow funds held on behalf of Orrin Tolliver.3 The funds allegedly
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`reflect a $1,185,000.00 judgment awarded to Mr. Tolliver on June 23, 2011 by the United States
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`District Court for the Southern District of New York in Case No.05-10840. For the reasons stated
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`below, the moving Defendants’ Motion to Dismiss is granted, the Motions for Default Judgment and
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`Injunctive Relief are denied as moot, and this action is dismissed on the merits.
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`Background
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`In 1982, Plaintiff entered into an oral agreement to co-author a musical composition
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`entitled, “I Need a Freak”(hereinafter "the Song").4 He claims he composed, performed and
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` 3Cherry Lane Music opposed the Motion arguing, inter alia, that it is not holding any money in
`escrow for Mr. Tolliver.
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` 4In his Motion for Injunctive Relief, Plaintiff explains he had "an oral agreement with Defendants
`(continued...)
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 3 of 11. PageID #: 126
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`recorded the “music portion” of the Song with his brother, Samuel McCants. In 2002, however,
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`Orrin Tolliver allegedly made knowing misrepresentations “to obtain a Copyright” for the Song.
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`Plaintiff became aware of these alleged false statements when “he applied for a Copyright” of the
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`Song on December 1, 2010. (Compl. at ¶15.) He learned that James McCants and/or Orrin Tolliver
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`licensed the musical portion of the Song to will.i.am, and Cherry Music for use by the musical
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`group, Black Eyed Peas. The Song was sampled and recorded by the Black Eyed Peas in a musical
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`composition entitled “My Humps.” The Black Eyes Peas performed a portion of the Song, which
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`Plaintiff “co-authored and performed several years earlier.”
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`Messrs. Tolliver, McCants, Adams and will.i.am failed to provide Plaintiff his
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`“rightful share of the new musical composition ‘My Humps.’” (Compl. at ¶ 20.) He argues these
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`Defendants exploited the Song when they received income from its sales without his permission.
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`The Black Eyed Peas recorded and released “My Humps” on their album “Monkey Business”
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`through A&M Records, a wholly owned entity of UMG. UMG then allegedly exploited the Song
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`when it included it in the Black Eyed Peas’ performance of “My Humps.” For their “authoring and
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`publishing of ‘My Humps’” without Plaintiff’s consent as the co-author and performer, Plaintiff
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`asserts the Defendants violated the Copyright Act.
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`Standard of Review
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`To survive a Rule 12(b)(6) motion, a plaintiff is obligated “to provide the grounds
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`of his entitlement to relief . . . labels and conclusions, and a formulaic recitation of the elements of
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` 4(...continued)
`James Louis McCants, Orrin Lynn Tolliver, Jr. and his brother Sam McCants where it was agreed
`that if the song ‘I need [sic] a Freak’ were to make a profit everyone mentioned above would share
`equally any profit made." (Pl.’s Mot. Inj. Rel. at 2.)
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 4 of 11. PageID #: 127
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`a cause of action will not do." Assn. of Cleveland Fire Fighters v. Cleveland, 502 F.3d 545, 548 (6th
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`Cir.2007) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, __127 S.Ct. 1955, 1964-65 (2007)).
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`Even though a complaint need not contain “detailed” factual allegations, its “[f]actual allegations
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`must be enough to raise a right to relief above the speculative level on the assumption that all the
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`allegations in the complaint are true.” Id. (internal citation and quotation marks omitted). If,
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`however, an allegation is capable of more than one inference, this Court must construe it in the
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`plaintiff's favor. Columbia Natural Res., Inc. v. Tatum, 58 F.3d 1101, 1109 (6th Cir.1995) (citing
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`Allard v. Weitzman, 991 F.2d 1236, 1240 (6th Cir.1993)). A Rule 12(b)(6) motion cannot be granted
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`merely because the Court may not believe the plaintiff's factual allegations. Id.
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`The first step in testing the sufficiency of the complaint is to identify any conclusory
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`allegations. Ashcroft v. Iqbal, --- U.S. ----, 129 S.Ct. 1937, 1950 (2009). “Threadbare recitals of the
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`elements of a cause of action, supported by mere conclusory statements, do not suffice.” Id. at 1949
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`(citing Bell, 550 U.S. at 555). “[A] plaintiff's obligation to provide the grounds of his entitlement
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`to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a
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`cause of action will not do.” Bell, 550 U.S. at 555 (citations and quotation marks omitted). Although
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`the court must accept well-pleaded factual allegations of the complaint as true for purposes of a
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`motion to dismiss, the court is “not bound to accept as true a legal conclusion couched as a factual
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`allegation.” Id.
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`Discussion
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`17 U.S.C. §106
`Copyright Infringement
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`Federal courts have exclusive original jurisdiction over actions arising under the
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`federal copyright laws. See 28 U.S.C. § 1338(a). An action “arises under” the copyright laws “if the
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 5 of 11. PageID #: 128
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`complaint is for a remedy expressly granted by the [Copyright] Act, ... or asserts a claim requiring
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`construction of the Act ... or, at the very least and perhaps more doubtfully, presents a case where
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`a distinctive policy of the Act requires that federal principles control the disposition of the claim.”
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`T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir.1964), cert. denied, 381 U.S. 915(1965).
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`The Copyright Act provides that “[c]opyright in a work protected under this title vests
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`initially in the author or authors of the work. The authors of a joint work are co[-]owners of
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`copyright in the work.” 17 U.S.C. § 201(a). Under the Copyright Act:
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`[I]t is the exclusive right of the owner of the copyright to do and to
`authorize any of the following:
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`(1) to reproduce the copyrighted work in copies or
`phonorecords;
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`(2) to prepare derivative works based upon the
`copyrighted work;
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`(3) to distribute copies or phonorecords of the
`copyrighted work to the public by sale or other
`transfer of ownership, or by rental, lease, or lending;
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`(4) in the case of literary, musical, dramatic, and
`choreographic works, pantomimes, and motion
`pictures and other audiovisual works, to perform the
`copyrighted work publicly;
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`(5) in the case of literary, musical, dramatic, and
`choreographic works, pantomimes, and pictorial,
`graphic, or sculptural works, including the individual
`images of a motion picture or other audiovisual work,
`to display the copyrighted work publicly; and
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`(6) in the case of sound recordings, to perform the
`copyrighted work publicly by means of a digital audio
`transmission.
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`17 U.S.C. § 106. While Plaintiff asserts entitlement to the rights of a copyright holder, he does not
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 6 of 11. PageID #: 129
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`allege he has a registered copyright in the Song. Rather, he contends that his ownership rights are
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`derived from his status as co-author of the Song. This role as co-author was presumably established
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`by oral agreement with his brother in 1982. Thereafter, either his brother, or Orrin Tolliver
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`registered a copyright in the Song without acknowledging Plaintiff as a co-author.
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`Defendants argue Plaintiff is not entitled to relief under the Copyright Act because
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`he has no registered copyright in the Song. Section 501 of the 1976 Copyright Act gives the power
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`to claim infringement only to the copyright owner or exclusive licensees. Motta v. Samuel Weiser,
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`Inc., 768 F.2d 481, 483-84 (1st Cir.1985) (“If a plaintiff is not the author of the copyrighted work
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`then he or she must establish a proprietary right through the chain of title in order to support a valid
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`claim to the copyright .... Absent this showing, a plaintiff does not have standing to bring an action
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`under the [1976] Copyright Act.”) Without an ownership interest in the copyright a party lacks
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`standing to sue under the Copyrigt Act. R. Ready Productions, Inc. v. Cantrell, 85 F.Supp.2d 672,
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`684 n. 11 (S.D.Tex.2000).
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`Indeed, Plaintiff admits that Orrin Tolliver has a registered copyright in the Song.
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`Therefore, his only attachment to a copyright interest would be through co-authorship. The only
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`vehicle through which that co-authorship could be established was by oral agreement in 1982. This
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`Court is mindful that "[t]he federal courts having exclusive jurisdiction to determine the statutory
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`infringement, [also] have incidental power to hear and decide claims of title which necessarily bear
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`upon the ultimate question of infringement," 3 NIMMER ON COPYRIGHT § 12.01 at 12-6-12-7 (1978)
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`(citations omitted), and the general rule is that "an action 'arises under' the Copyright Act if ... the
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`complaint is for a remedy expressly granted by the Act, e.g., a suit for infringement ...". T.B. Harms
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`Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964), cert. denied, 381 U.S. 915 (1965).
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 7 of 11. PageID #: 130
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`Any infringement action Plaintiff seeks must be predicated on the oral agreement
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`that he co-authored the Song and, thus, is a joint owner of the copyright. See Picture Music, Inc. v.
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`Bourne, Inc., 314 F.Supp. 640, 645 (S.D.N.Y. 1970), aff'd 457 F.2d 1213 (2d Cir.), cert. denied, 409
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`U.S. 997 (1972). It seems clear, therefore, that the true purpose of this Complaint is to obtain a
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`declaration from this Court that Plaintiff is indeed a joint owner of the copyright. An action does
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`not ‘arise under’ the Copyright Act where there are no facts alleged that would support a claim of
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`infringement. Harms, 339 F.2d 828. To the extent Plaintiff must first establish his co-author status
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`through a potential contractual dispute, this Court lacks jurisdiction.
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`An action to establish title is not one “arising under” the Copyright Act so as to give
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`the federal courts jurisdiction under 28 U.S.C. § 1338(a). See Perry v. Broadcast Music, Inc., No.
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`00-6103, 2001 WL 1298950, at *1 (6th Cir.Aug. 7, 2001); see, e.g., T.B. Harms Co. v. Eliscu, 339
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`F.2d 823, 824 (2d Cir.1964). In particular, “the federal grant of a ... copyright has not been thought
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`to infuse with any national interest a dispute as to ownership or contractual enforcement turning on
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`the facts or on ordinary principles of contract law.” Harms, 339 F.2d at 826. Questions of title
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`dependent on general common law or equitable principles are more appropriately referred to a state
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`court, Peay v. Morton, 571 F. Supp.108, 112-13 (D.C.Tenn.,1983), even when the complaint is
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`framed in terms of copyright infringement. See T.B. Harms v. Eliscu, 226 F.Supp. 337 (S.D.N.Y.),
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`aff'd 339 F.2d 823 (2d Cir. 1964), cert. denied, 381 U.S. 915 (1965). Courts have emphasized that
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`even if artful drafting of the complaint sufficiently invoked federal jurisdiction, the complaint may
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`still be dismissed for failure to state a claim for relief in “cases that are couched in terms of
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`copyright but that, in fact, seek to vindicate rights created under state law, e.g., contractual rights
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`to ownership or royalties.” Vestron, Inc. v. Home Box Office, Inc., 839 F.2d 1380, 1382 (9th Cir.
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 8 of 11. PageID #: 131
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`1988) (citing, e.g., Dolch v. United California Bank, 702 F.2d 178 (9th Cir. 1983)). Resolution of this
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`dispute does not involve comparison or construction of the copyrighted work. Nor is there any need
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`to interpret the Act. See Berger v. Simon & Schuster, 631 F.Supp. 915, 917 (S.D.N.Y.1986);
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`Franklin v. Cannon Films, Inc., 654 F. Supp. 133, 135 (C.D.Cal. 1987).
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`Even if this Court established Plaintiff’s status as a co-author, his copyright claim
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`against Orrin Tolliver, James McCants and their licensees would fail. A joint copyright owner
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`cannot sue his co-owner or his co-owner's licensee for infringement, Donna v. Dodd, Mead & Co.,
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`374 F.Supp. 429, 430 (S.D.N.Y. 1974); Harrington v. Mure, 186 F.Supp. 655, 657 (S.D.N.Y. 1960),
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`because a copyright owner cannot infringe his own copyright. Richmond v. Weiner, 353 F.2d 41, 46
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`(9th Cir. 1965), cert. denied, 384 U.S. 928 (1966). Plaintiff admits Tolliver and/or McCants licensed
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`the use of the musical portion of the Song to will.i.am and Cherry for use by the Black Eyed Peas.
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`See generally, 3 NIMMER ON COPYRIGHT, §§ 10.01-10.15, at 10-4-10-108 (1978). As the Defendants
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`noted, each co-owner of a copyright “has an independent right to use or license the use of the
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`copyright.” Oddo v. Ries, 743 F.2d 630, 633 (9th Cir. 1984). Moreover, Plaintiff does not dispute
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`that Tolliver and/or McCants were at least co-authors or that Cherry and will.i.am are licensees of
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`Tolliver and/or McCants. As the District Court of New York aptly noted:
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`If a stranger exploits the composition and deprives the
`creator of his right to exclusive enjoyment of the
`fruits of his efforts, an infringement action will lie.
`But if a co-author, one who cannot be charged with
`infringement, authorizes the exploitation of the work
`and the exclusion of his collaborator, a technicality
`bars access to the federal court. The alleged
`technicality, however, is a direct result of the
`congressional plan with respect
`to copyright
`litigation. ... Congress left a considerable residue of
`power in the state courts to pass on 'copyright
`questions'-among them, questions arising in contract
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 9 of 11. PageID #: 132
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`and title disputes.
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`Harrington v. Mure, 186 F.Supp. 655, 658 (S.D.N.Y. 1960). This being so, neither Tolliver nor
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`McCants can infringe any copyright that Plaintiff, as co-author, may possess. Plaintiff has failed
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`to allege any action by the Defendants that would support a claim of infringement.
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`Fraud
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`Under the Copyright Act, “immaterial, inadvertent errors in an application for
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`copyright registration do not jeopardize the validity of the registration.” Data General Corporation
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`v. Grumman Systems Support Corporation, 36 F.3d 1147, 1161 (1st Cir.1994); see Automated
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`Solutions Corp. v. Paragon Data Systems, Inc., No. 1:05 CV 1519, 2008 WL 2404972 (N.D. Ohio
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`June 11, 2008). Plaintiff alleges Tolliver "knowingly made false representations of material facts
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`to obtain a Copyright" to the Song. (Compl. at ¶16). No further details or additional facts are
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`alleged. The test for materiality turns on whether “its discovery is not likely to have led the
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`Copyright Office to refuse the application.” Id. “Mistakes such as an incorrect date of creation or
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`failure to list all co-authors easily qualify as immaterial because the Copyright Office's decision
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`to issue a certificate would not be affected by them.” Torres-Negron v. J & N Records, LLC, 504
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`F.3d 151, 158 (1st Cir. 2007)(citing Data Gen. Corp, 36 F.3d at 1163)(stating that inadvertent
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`failures to list preexisting works or coauthors are encompassed by the rule excusing immaterial
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`mistakes)(emphasis added). “[W]here a plaintiff's registration was procured through fraud ... the
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`registration becomes invalid and the courts lack jurisdiction over the case.” Torres-Negron, 504
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`F.3d. at 162; see 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER on Copyright § 7.20, at 7-201
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`(“[A] misstatement or clerical error in the registration application, if unaccompanied by fraud,
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`should neither invalidate the copyright nor render the registration certificate incapable of supporting
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 10 of 11. PageID #: 133
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`an infringement action ... If the claimant wilfully misstates or fails to state a fact that, if known,
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`might have caused the Copyright Office to reject the application, then the registration may be ruled
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`invalid.”).
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` The Defendants have successfully argued that Plaintiff’s fraud allegations fall short
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`of the specificity required by Federal Civil Rule 9(b). In any complaint averring fraud or mistake,
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`“the circumstances constituting fraud or mistake shall be stated with particularity.” FED. CIV. R.
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`9(b). Instead, of providing specific details, Plaintiff argues in his Opposition brief that only the
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`Defendants have the information he needs to support his allegations. To that end, he seeks to
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`establish his claims through the discovery process. This is an unavailing option.
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`It is well-established that “there is no general right to discovery upon filing of the
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`complaint.”Yuhasz v. Brush Wellman, Inc., 341 F.3d 559, 566 (6th Cir.2003). “[T]he very purpose
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`of Fed.R.Civ.P. 12(b)(6) is to enable defendants to challenge the legal sufficiency of complaints
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`without subjecting themselves to discovery.” Id. (internal quotation marks omitted). The significant
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`point is that, when a plaintiff files a complaint that fails to state a claim as a matter of law, he cannot
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`complain that he is entitled to discovery to state his claim. In the absence of a cognizable claim,
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`Plaintiff has no right to any discovery---particularly when he has failed to allege the requisite
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`elements of a fraud claim.
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`Finally, Plaintiff's underlying claim is that a valid copyright exists, which entitles him
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`to recover damages. By attacking Mr. Tolliver's application for copyright registration based on
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`fraud, however, he invites the Copyright Office to invalidate the registration. An allegation of fraud
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`requires a claim that the Copyright Office should have rejected the application. See NIMMER ON
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`COPYRIGHT § 7.20, at 7-201 If the fraud argument were successful, the net effect would be an
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`Case: 1:11-cv-00664-PAG Doc #: 22 Filed: 07/15/11 11 of 11. PageID #: 134
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`elimination of this Court’s jurisdiction. See Torres-Negron, 504 F.3d at160 (an invalid registration
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`[involving material errors, fraud, or an incomplete application] nullifies the federal court's subject
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`matter jurisdiction.) Where a plaintiff's copyright registration has been invalidated because of a
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`finding of fraud or intentional misrepresentation on the registration application, the First, Second,
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`Third, Fifth and Eleventh Circuit Courts have concluded that the plaintiff's copyright is simply
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`“unenforceable” and have dismissed the claims without discussion of the merits, again indicating
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`that a valid registration is necessary for federal jurisdiction. See Fonar Corp. v. Domenick, 105 F.3d
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`99, 104 (2d Cir. 1997); Lenert v. Duck Head Apparel Co. Inc., 99 F.3d 1136, 1136 (5th Cir. 1996);
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`Masquerade Novelty, Inc. v. Unique Industries, Inc ., 912 F.2d 663, 667 (3d Cir.1990); Original
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`Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982). Thus, as a matter
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`of course, Plaintiff cannot seek to invalidate the same copyright registration through which he is
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`asserting entitlement to damages.
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`Conclusion
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`Accordingly, Defendants BMG Rights Management, as successor-in-interest to
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`Cherry Lane Music, Will Adams, and will.i.am music, inc’s Motion to Dismiss pursuant to Rule
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`12(b)(6) (Dkt.# 9), in which Defendant UMG is joined, is granted. Further, this Court finds sua
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`sponte that Plaintiff has failed to state a claim for relief against Defendants James Louis McCants
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`d/b/a Jimi MAC Music & OG Music and Orrin Lynn Tolliver, Jr. Because Plaintiff has failed to
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`state a claim upon which this Court can grant relief, his Motion for Default Judgment (Dkt.# 14) and
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`Motion for Injunctive Relief (Dkt.#18) are denied as moot and this action is dismissed.
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` IT IS SO ORDERED.
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`Dated: 7/14/11
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` /s/ Patricia A. Gaughan
`PATRICIA A. GAUGHAN
`UNITED STATES DISTRICT JUDGE
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