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`20-1715
`Brandon v. NPG Records, Inc.
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`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
`SUMMARY ORDER
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`RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
`SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007 IS PERMITTED AND IS GOVERNED BY
`FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN
`CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE
`EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION
`“SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON
`ANY PARTY NOT REPRESENTED BY COUNSEL.
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`At a stated term of the United States Court of Appeals for the Second Circuit, held
`at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New
`York, on the 28th day of December, two thousand twenty.
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`PRESENT:
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`AMALYA L. KEARSE,
`JOSEPH F. BIANCO,
`STEVEN J. MENASHI,
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`Circuit Judges.
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`JAMES M. BRANDON,
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`Plaintiff-Appellant,
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`v.
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`20-1715
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`NPG RECORDS, INC., NPG MUSIC PUBLISHING,
`LLC, THE ESTATE OF PRINCE ROGERS NELSON,
`COMERICA BANK & TRUST, N.A., SHELTON JACKSON LEE,
`FORTY ACRES AND A MULE MUSICWORKS, INC.,
`TWENTIETH CENTURY FOX FILM CORP.,
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`Defendants-Appellees.
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`For Plaintiff-Appellant James M. Brandon:
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`David Ludwig, Dunlap Bennett &
`Ludwig PLLC, New York, NY.
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`For Defendants-Appellees NPG Records, Inc.,
`NPG Music Publishing, LLC,
`The Estate of Prince Rogers Nelson,
`and Comerica Bank & Trust, N.A.:
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`For Defendants-Appellees Shelton Jackson Lee,
`Forty Acres and a Mule Musicworks, Inc., and
`Twentieth Century Fox Film Corp.:
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`Lora M. Friedemann, Fredrikson &
`Byron, P.A., Minneapolis, MN,
`Michael J. Tricarico, Kennedys CMK
`LLP, New York, NY.
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`Matthew S. Nelles, E. Adriana
`Kostencki, Nelles Kostencki, PLLC,
`Fort Lauderdale, FL, Howard J. Shire,
`Troutman Pepper Hamilton Sanders
`LLP, New York, NY.
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`Appeal from a judgment of the United States District Court for the Southern District of
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`New York (Woods, J.).
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`UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND
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`DECREED that the judgment of the district court is AFFIRMED.
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`Plaintiff-Appellant James M. Brandon appeals from the April 30, 2020 judgment of the
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`United States District Court for the Southern District of New York (Woods, J.), granting
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`Defendants-Appellees’ motion to dismiss Brandon’s amended complaint with prejudice pursuant
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`to Federal Rule of Civil Procedure 12(b)(6). We assume the parties’ familiarity with the
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`underlying facts, procedural history, and issues on appeal, which we reference only as necessary
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`to explain our decision to affirm.
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`I. Background
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`In 2015, Brandon filed a lawsuit in the United States District Court for the Southern District
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`of Florida (the “Florida litigation”) alleging copyright infringement claims against a number of
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`defendants, including, among others, some of the defendants in this action: Prince Rogers Nelson
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`2
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`(“Prince”),1 Shelton Jackson (“Spike”) Lee, Forty Acres and a Mule Musicworks, Inc. (“Forty
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`Acres Music”), and Twentieth Century Fox Film Corporation (“Twentieth Century Fox”)
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`(collectively, the “Prince and Lee Defendants”). Brandon alleged that the song “Girl 6,” which
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`had been written and performed by Prince for a Spike Lee film of the same name, infringed upon
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`his 1995 copyright for the song “Phone Sex.” By its terms, Brandon’s copyright registration
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`covered song lyrics only. However, in support of his copyright infringement claims, Brandon
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`alleged, inter alia, that Girl 6 and Phone Sex both have “substantially similar . . . two-word, two-
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`pitch hook[s],” the same “‘trumpet hit’ arrangement,” and “a similar layout” using “an echo-sound
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`reverberation effect.” App’x at 108.
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`A number of defendants who are not parties in this action, including Tommy Elm (“Elm”)
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`and Warner Brothers Records, Inc. (“Warner Brothers”), moved to dismiss Brandon’s complaint
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`for failure to state a claim pursuant to Rule 12(b)(6). The district court in Florida (the “Florida
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`court”) granted the motions, finding that the operative complaint failed to state a claim for
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`copyright infringement. In particular, the Florida court held that “short phrases or common or
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`ordinary words,” such as “phone sex,” are not copyrightable as a matter of law, App’x at 63, and
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`that, therefore, the alleged similarities between the lyrics of Girl 6 and Phone Sex could not provide
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`a basis for Brandon’s copyright infringement claim. The Florida court also declined to address
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`whether Girl 6 infringed upon the melody, arrangement, or performance of Phone Sex because
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`Brandon’s copyright registration covers only the lyrics of the song, and rejected Brandon’s
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`assertion that a supplemental application he had filed with the United States Copyright Office
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`while the litigation in Florida was pending expanded his copyright registration to include the
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`1
`Prince Rogers Nelson—better known as the recording artist Prince—passed away while
`the Florida litigation was pending.
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`3
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`melody, arrangement, and performance of Phone Sex. As to the Prince and Lee Defendants, the
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`Florida court dismissed the case against them without prejudice for insufficient service of process.
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`App’x at 70–73.
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`Brandon subsequently brought the instant action in the United States District Court for the
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`Southern District of New York against the Prince and Lee Defendants and certain other parties,
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`again alleging that Girl 6 infringed upon his copyright for Phone Sex. The district court in this
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`action granted defendants’ motions to dismiss under Rule 12(b)(6) and held that the doctrine of
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`collateral estoppel bars Brandon from relitigating issues that previously have been decided against
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`him.
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`II. Discussion
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`We review a district court’s dismissal of a complaint under Rule 12(b)(6) de novo,
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`“‘construing the complaint liberally, accepting all factual allegations in the complaint as true, and
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`drawing all reasonable inferences in the plaintiff’s favor.’” Kim v. Kimm, 884 F.3d 98, 102–03
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`(2d Cir. 2018) (quoting Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002)). In
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`addition, we review de novo the district court’s application of the doctrine of collateral estoppel.
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`See Hoblock v. Albany Cnty. Bd. of Elections, 422 F.3d 77, 93 (2d Cir. 2005). Although a defense
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`such as collateral estoppel is normally to be raised as an affirmative defense, see Fed. R. Civ. P.
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`8(c)(1), where “‘it is clear from the face of the complaint . . . that the plaintiff’s claims are barred
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`as a matter of law,’ dismissal under Fed. R. Civ. P. 12(b)(6) is appropriate,” Austin v. Downs,
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`Rachlin & Martin Burlington St. Johnsbury, 270 F. App’x 52, 53 (2d Cir. 2008) (summary order)
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`(quoting Conopco, Inc. v. Roll Int’l, 231 F.3d 82, 86 (2d Cir. 2000)). In the present case this is
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`clear from the amended complaint and its attached exhibits.
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`4
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`The doctrine of collateral estoppel, or issue preclusion, bars parties “from relitigating in a
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`subsequent action an issue of fact or law that was fully and fairly litigated in a prior proceeding.”
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`Marvel Characters, Inc. v. Simon, 310 F.3d 280, 288 (2d Cir. 2002). Federal law applies in cases
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`where, as here, the preclusive effect of a prior federal judgment is at issue. See Purdy v. Zeldes,
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`337 F.3d 253, 258 n.5 (2d Cir. 2003). Under federal law, “[c]ollateral estoppel applies when:
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`‘(1) the identical issue was raised in a previous proceeding; (2) the issue was actually litigated and
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`decided in the previous proceeding; (3) the party [against whom collateral estoppel is being
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`asserted] had a full and fair opportunity to litigate the issue; and (4) the resolution of the issue was
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`necessary to support a valid and final judgment on the merits.’” Marvel Characters, Inc., 310 F.3d
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`at 288–89 (quoting Boguslavsky v. Kaplan, 159 F.3d 715, 720 (2d Cir. 1998)). Applying these
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`factors here, we agree with the district court’s conclusion that the Florida court’s decision against
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`Brandon precludes him from relitigating the question of whether Girl 6 infringed his copyright for
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`Phone Sex.
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`First, it is undisputed that the instant case involves the same issue as the proceeding in the
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`Southern District of Florida. In the Florida litigation and here, Brandon asserts, in a nearly
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`identical manner, that Girl 6 infringed his copyright registration for Phone Sex. Compare App’x
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`at 108, ¶¶ 33–35, with App’x at 169–70, ¶¶ 30–32. Second, it is clear that the copyright
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`infringement issue was actually litigated and decided in the Florida litigation. After Brandon filed
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`three amended complaints alleging copyright infringement, the parties in that action briefed that
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`issue extensively in connection with defendants’ motions to dismiss. The Florida court then issued
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`a detailed order, dismissing Brandon’s Third Amended Complaint and holding that the short
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`phrase “phone sex” is not copyrightable, that Brandon’s copyright registration covers only song
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`lyrics, not melody, arrangement, or performance, and that Brandon’s supplemental application
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`does not expand the scope of his copyright for the song Phone Sex. Third, the procedural history
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`of the Florida litigation also demonstrates that Brandon had a full and fair opportunity to litigate
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`copyright infringement before the Florida court and, as discussed more fully below, Brandon raises
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`no convincing arguments to the contrary. Fourth, resolution of the copyright infringement issue
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`was necessary to support the Florida court’s final judgment on the merits. Among the defendants
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`in the Florida litigation, Elm and Warner Brothers moved to dismiss Brandon’s complaint for
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`failure to state a claim for copyright infringement. In granting those motions and dismissing the
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`complaint on the merits, the Florida court was required to resolve the copyright infringement issue,
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`and it did. Therefore, all four requirements for applying the doctrine of collateral estoppel against
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`Brandon in this case have been met.
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`On appeal, Brandon asserts that he was not afforded a full and fair opportunity to litigate
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`the copyright infringement issue in the Florida litigation. Brandon, as the party seeking to prevent
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`the application of collateral estoppel here, has the burden of showing that he did not have a full
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`and fair opportunity to litigate copyright infringement before the Florida court. See Proctor v.
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`LeClaire, 715 F.3d 402, 414 (2d Cir. 2013). Specifically, Brandon contends that his “inability to
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`obtain appellate review of an issue or the lack of such review once an appeal is taken” prevents
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`the application of collateral estoppel. Appellant Br. at 13–14. We disagree with Brandon’s
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`premise that he was unable to obtain appellate review. In support of this argument, Brandon
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`appears to contend that, had he appealed the Florida court’s decision to the Court of Appeals for
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`the Eleventh Circuit, the decision would have been subject to highly deferential clear error review
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`because the Florida court “prematurely resolved” issues of fact at the motion to dismiss stage of
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`the litigation. Appellant Br. at 14–16.
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`As an initial matter, we reject Brandon’s premise that the Eleventh Circuit would have
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`reviewed the Florida court’s decision for clear error. Like this Court, the Eleventh Circuit reviews
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`a district court’s grant of a motion to dismiss de novo. See Fourth Estate Pub. Benefit Corp. v.
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`Wall-Street.com, LLC, 856 F.3d 1338, 1339 (11th Cir. 2017). Moreover, we agree with the district
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`court here that the Florida court did not improperly resolve any factual issues. Instead, accepting
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`all of the facts alleged in Brandon’s Third Amended Complaint as true, the Florida court held that
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`Brandon failed to state a claim of copyright infringement as a matter of law.
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`Furthermore, the cases that Brandon relies upon for the proposition that his decision not to
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`appeal the Florida court’s ruling should prevent the application of collateral estoppel are
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`inapposite. In Gelb v. Royal Globe Insurance Co., we held that collateral estoppel did not apply
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`in an insurance dispute to the issue of whether plaintiff caused a fire because we had not decided
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`that issue in plaintiff’s prior criminal appeal, noting that “if an appeal is taken and the appellate
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`court affirms on one ground and disregards the other, there is no collateral estoppel as to the
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`unreviewed ground.” 798 F.2d 38, 45 (2d Cir. 1986) (emphasis added). Here, Brandon did not
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`appeal the Florida court’s decision, let alone raise multiple grounds for appeal. Indeed, in relying
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`on Gelb, Brandon ignores that we expressly stated that “failure to appeal does not prevent
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`preclusion.” Id. at 44. In short, Gelb does nothing to support Brandon’s contention that his failure
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`to seek appellate review of the Florida court’s decision prevents the application of collateral
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`estoppel in this case.2 As the district court here aptly noted, if Brandon took issue with the Florida
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`Brandon’s reliance on our decision in Aviall, Inc. v. Ryder System, Inc., 110 F.3d 892 (2d
`Cir. 1997), is similarly misplaced. In that case, we stated that the district court’s partiality finding
`regarding an arbitrator could not be used to collaterally estop the losing party from litigating that
`issue in the future because the district court’s finding as to the partiality issue was not essential to
`its ultimate decision, and because we did not address that issue on appeal. See id. at 897. Thus,
`like Gelb, Aviall is inapposite given that Brandon filed no appeal in the Florida litigation.
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`court’s decision against him on the merits, “the proper recourse was an appeal to the Eleventh
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`Circuit Court of Appeals, not a second bite at the apple in the Southern District of New York.”
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`App’x at 602–03.
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`In addition to the foregoing, Brandon argues that the absence of defendants in this case
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`from the Florida litigation should prevent the application of collateral estoppel. Brandon is
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`mistaken, however, because it is well established that mutuality of parties is not a prerequisite for
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`the application of collateral estoppel where, as here, a losing party raises identical issues in
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`consecutive judicial proceedings. See Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326–27
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`(1979); see also Wilder v. Thomas, 854 F.2d 605, 621 (2d Cir. 1988) (holding that defendants may
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`“invoke defensive collateral estoppel even though they were not parties” in the prior case because
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`“[t]he central question is whether the plaintiffs have had their day in court, and the answer here is
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`‘yes’” (internal citation omitted)); Austin, 270 F. App’x at 54 (“Under non-mutual collateral
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`estoppel, if a litigant has had an opportunity to fully and fairly litigate an issue and lost, then third
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`parties unrelated to the original action can bar the litigant from relitigating that same issue in a
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`subsequent suit.” (citing United States v. Ustica, 847 F.2d 42, 49 n.14 (2d Cir. 1988))). Simply
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`put, it is of no moment that some of the defendants in the instant case were not parties to the Florida
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`court’s decision on the motions to dismiss; what matters is that Brandon was a party and, therefore,
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`had ample opportunity to litigate the copyright infringement issue.
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`It is for this reason that Brandon’s reliance on Taylor v. Sturgell, 553 U.S. 880 (2008) is
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`unavailing. At issue in Taylor was whether a lawsuit should be precluded in light of a prior
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`judgment in a case in which the plaintiff was not a party and therefore did not have the opportunity
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`to litigate the claims at issue. Id. at 884–85. In the instant case, by contrast, Brandon—the party
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`against whom collateral estoppel is sought—was a party to the Florida litigation, where he had the
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`opportunity to litigate the alleged copyright infringement issue. Thus, Taylor has no bearing here.
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`We have considered all of Brandon’s remaining arguments and conclude that they are
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`without merit. Accordingly, we AFFIRM the judgment of the district court.
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`FOR THE COURT:
`Catherine O’Hagan Wolfe,
`Clerk of Court
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