Joseph H. McKinley, Jr., Chief Judge.
This matter is before the Court on two motions for partial summary judgment by defendants Capitol Records, LLC ("Capitol") and Andre Romelle Young p/k/a Dr.
Plaintiff Leroy Mitchell is a singer, songwriter, and record producer who has performed under the name "Prince Phillip Mitchell." (Pl.'s Second Amend. Compl. [DN 116] ¶ 1.) Mitchell is the sole proprietor of Hot Stuff Publishing Co. (Id. ¶ 10.) On July 5, 1977, the United States Copyright Office issued a certificate of copyright for the musical composition titled "Star in the Ghetto." (Copyright Certificate [DN 91-1] at 2.) The claimant of the copyright is listed as Hot Stuff Publishing Co., and the author of both the words and music is listed as Phillip Mitchell. (Id.) A recording of this composition was made by Ben E. King and the Average White Band under the title "A Star in the Ghetto." (Pl.'s Second Amend. Compl. [DN 116] ¶ 1.)
At issue in this case is the alleged unauthorized use of this composition and sound recording in "If It Ain't Ruff," a song by the hip-hop group N.W.A. and included on the album "Straight Outta Compton." The musical composition for this song was published on February 15, 1989, and the copyright was registered on June 10, 1992, with this copyright now allegedly owned by defendant Capitol.
Capitol and Young have filed two motions for partial summary judgment. The first motion seeks to preclude Mitchell from recovering any damages for infringements that are alleged to have occurred more than three years prior to his filing of the present action, as such infringements would fall outside of the Copyright Act's three-year statute of limitations. (DN 88.) The second argues that Mitchell may not recover for any infringement of the sound recording of "A Star in the Ghetto," as he does not actually own the copyright to the sound recording. (DN 91.) Mitchell opposes both motions. (DN 90, 94.)
Before the Court may grant a motion for summary judgment, it must find that there is no genuine dispute as to any material fact and that the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The moving party bears the initial burden of specifying the basis for its motion and identifying that portion of the record that demonstrates the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once
Although the Court must review the evidence in the light most favorable to the non-moving party, the non-moving party must do more than merely show that there is some "metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). Instead, the Federal Rules of Civil Procedure require the non-moving party to present specific facts showing that a genuine factual issue exists by "citing to particular parts of materials in the record" or by "showing that the materials cited do not establish the absence ... of a genuine dispute[.]" Fed. R. Civ. P. 56(c)(1). "The mere existence of a scintilla of evidence in support of the [non-moving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson, 477 U.S. at 252, 106 S.Ct. 2505.
The first motion for partial summary judgment seeks to limit Mitchell's recovery to only those damages that arose from infringing acts that occurred within three years of the initiation of this suit. The defendants have moved for leave to file supplemental authority on this issue (DN 113), which the Court will
The Copyright Act imposes a three-year statute of limitations on claims of copyright infringement from the date the claims accrued. 17 U.S.C. § 507(b). The Sixth Circuit recognizes two important rules in relation to this statute of limitations. First, "each new infringing act causes a new three year statutory period to begin," as "each infringement is a distinct harm." Roger Miller Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir. 2007) (quoting Ritchie v. Williams, 395 F.3d 283, 288 n. 5 (6th Cir. 2005)). See also Petrella v. Metro-Goldwyn-Mayer, ___ U.S. ___, 134 S.Ct. 1962, 1969, 188 L.Ed.2d 979 (2014) ("Each time an infringing work is reproduced or distributed, the infringer commits a new wrong"). And second, while "the statute of limitations bars infringement claims that accrued more than three years before suit was filed," a claim only "accrues when a plaintiff knows of the potential violation or is chargeable with such knowledge." Roger Miller, 477 F.3d at 390 (quoting Bridgeport Music, Inc. v. Rhyme Syndicate Music, 376 F.3d 615, 621 (6th Cir. 2004)). This is the so-called "discovery rule."
Here, Mitchell has pled that the Defendants have infringed on his copyrights since the late 1980's, but he claims that he did not know, and could not have known, of the alleged infringement until May 2014. (Pl.'s Second Amend. Compl. [DN 116] ¶ 28; Decl. Mitchell [DN 90-1] ¶ 6; Decl. Christopher [DN 90-2] ¶¶ 5-7.) The defendants do not contest these facts at this stage.
The argument put forth by the defendants focuses on whether the Supreme Court's opinion in Petrella requires the use of a different accrual rule for copyright infringement cases, rather than the discovery rule. In Petrella, the Supreme Court was tasked with deciding "whether the equitable defense of laches ... may bar relief on a copyright infringement claim brought within § 507(b)'s three-year limitations period." Petrella, 134 S.Ct. at 1967. The Petrella Court concluded that laches was inapplicable to a copyright infringement case, but in laying the groundwork for its opinion, it made certain observations about the Copyright Act. One of these observations is that "[a] copyright claim thus arises or accrues when an infringing act occurs." Id. at 1969 (quotations omitted). It further noted that "a successful plaintiff can gain retrospective relief only three years back from the time of suit." Id. at 1970. The defendants argue that these statements equating the accrual of a claim with the occurrence of the infringement, rather than its discovery, preclude Mitchell from recovering damages for any infringement that occurred more than three years prior to the initiation of his suit. Mitchell responds by arguing that Petrella does not abrogate Sixth Circuit precedent on the discovery rule in copyright infringement cases, as the Supreme Court made clear it was not passing judgment on the validity of the discovery rule.
The Court agrees with Mitchell that Petrella does not require the Court to ignore Sixth Circuit precedent that clearly defines accrual of a copyright claim as occurring when the plaintiff "knew of the potential violation or is chargeable with such knowledge." Roger Miller, 477 F.3d at 390. In Petrella, the Court's statement equating accrual with the occurrence of the infringing act is accompanied by a footnote, which reads as follows:
Petrella, 134 S.Ct. at 1969 n. 4. Thus, the Court acknowledged that the "incident of injury" rule it described in the main text of the case is not the only rule that federal courts apply in copyright infringement cases. Since Petrella, the courts interpreting this footnote have largely decided that the discovery rule remains viable in the circuits that had previously applied it. E.g., Wolf v. Travolta, 167 F.Supp.3d 1077, 1092-93 (C.D. Cal. 2016) (applying discovery rule post-Petrella as Ninth Circuit precedent remained valid); Design Basics LLC v. J & V Roberts Inv., Inc., 130 F.Supp.3d 1266, 1281-82 (E.D. Wis. 2015) (same in Seventh Circuit); Lefkowitz v. McGraw-Hill Global Educ. Holdings, LLC, 23 F.Supp.3d 344, 357 n. 11 (S.D.N.Y. 2014) (same in Second Circuit). The District Court for the Eastern District of Pennsylvania succinctly and persuasively summarized the reasoning behind these opinions:
Grant Heilman Photography, Inc. v. McGraw-Hill Cos., Inc., 28 F.Supp.3d 399, 411 (E.D. Pa. 2014). Thus, the Court agrees with Mitchell that the discovery rule has not been abrogated by Petrella and that it remains the standard to be applied in copyright infringement cases in the Sixth Circuit.
The supplemental authority filed by the defendants, Papazian v. Sony Music Entm't, 2017 WL 4339662, at *4-5 (S.D.N.Y. Sep. 28, 2017), supports Defendant's alternative argument that even though the discovery rule may still apply, Petrella does not permit the plaintiff to recover any damages for those acts of infringement that occurred more than three years before the initiation of the action. The Court is not persuaded by Papazian, as the Sixth Circuit has never endorsed this scheme. The relevant date in the Sixth Circuit has always been the date of "accrual." See Rhyme Syndicate Music, 376 F.3d at 621 ("the statute of limitations bars infringement claims that accrued more than three years before suit was filed, but does not preclude infringement claims that accrued within the statutory period"); Hoste v. Radio Corp. of Am., 654 F.2d 11, 11-12 (6th Cir. 1981) (affirming decision that statute of limitations "bars recovery of any claims of plaintiff for damages which accrued prior to March 9, 1975"). The statute itself speaks in terms of accrual, not occurrence. 17 U.S.C. § 507(b) ("No civil action shall be maintained... unless it is commenced within three years after the claim accrued"). And while Petrella uses language that suggests that no damages may be recovered for acts of infringement which occurred more than three years prior to the initiation of the suit, these statements cannot be isolated from the Court's initial statement fixing accrual at the date of occurrence. Petrella, 134 S.Ct. at 1969 ("A copyright claim thus arises or accrues when an infringing act occurs") (quotations omitted). When the opinion is read in conjunction with footnote 4, which acknowledges that most circuits will modify this rule so as to focus on the date of "discovery" as opposed to the date of "occurrence," then Petrella reiterates what the Sixth Circuit already requires: that damages be limited to those claims for infringement that accrued within three years of the initiation of the suit, with accrual being determined by the rules of the circuit (until the Supreme Court "passe[s] on the question"). Adopting the Papazian approach effectively obliterates the discovery rule.
Mitchell has presented evidence that his claims did not accrue until May 2014, which the defendants have not contested at this time; as such, they were timely brought when he filed this action in February 2015. Further, he is not precluded from recovering damages for any claims that accrued within three years of the commencement of this action, regardless of the date of occurrence. Thus, the defendants' motion for partial summary judgment as to damages (DN 88) is
The defendants' next motion for partial summary judgment seeks to preclude Mitchell from pursuing a claim for infringement upon the copyright for the sound recording of "A Star in the Ghetto," as Mitchell has never actually owned the copyright to the sound recording. There are two different copyrights that may be registered in relation to a piece of music: one for "musical works [or composition],
"In order to establish a claim for copyright infringement, a plaintiff must establish that it owns a copyrighted work." King Records, Inc. v. Bennett, 438 F.Supp.2d 812, 837 (M.D. Tenn. 2006) (citing Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003)). The defendants argue that the copyright for the sound recording is not owned by Mitchell but rather by Atlantic Records. (Defs.' Mot. for Summ. J. [DN 91] at 2.) In support of this argument, they point to an application made for a copyright of the sound recording by Atlantic Records on June 30, 1977. (Copyright Application [DN 91-2] at 2-3.) In its reply, they argue that this is prima facie evidence of the validity of the copyright. (Defs.' Reply [DN 96] at 2.)
At the outset, the Court must note that it cannot consider the application for a copyright to the sound recording as prima facie evidence of the validity of the copyright. Under the Copyright Act, a certificate of registration of a copyright within a specified time period "shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c). However, § 410(c) specifically speaks to a certificate of registration, not an application. The Court cannot equate the two. The Copyright Act provides that an application may be rejected, undermining the notion that an application carries the same evidentiary value as a certificate of registration in demonstrating ownership of the copyright. 17 U.S.C. § 410(b). Therefore, the Court will not apply the § 410(c) evidentiary standard to the copyright application. Accord Marshall & Swift v. BS & A Software, 871 F.Supp. 952, 957 (W.D. Mich. 1994) ("Marshall appears to add the suggestion that a mere application for registration entitles a work to § 410(c)'s presumption of validity afforded to works accepted for registration. The court does not read the Copyright Act this way").
While Mitchell concedes that Atlantic Records did register a copyright for the sound recording "A Star in the Ghetto" (see Pl.'s Response [DN 94] at 3, 8), he attempts to rebut the defendants' evidence of his lack of ownership by pointing to a "Mechanical License" that was agreed to by Mitchell/Hot Stuff Publishing and Atlantic Records on July 7, 1977. (Mechanical License [DN 94-2] at 1.) This agreement, in relevant part, acknowledges that Mitchell/Hot Stuff Publishing "owns or otherwise controls the copyright or the mechanical production rights in the musical work entitled: `A STAR IN THE GHETTO' by: Phillip Mitchell." (Id. ¶ 1.) Per the agreement, Mitchell granted to Atlantic Records "the non-exclusive right, privilege and authority to use the work in the manufacture and sale of phonograph records bearing [Atlantic's] labels, in such instrumentation or form as will adapt the work, its words, music, or both, for use upon phonograph records." (Id.) Mitchell further promised that he possessed "good and lawful rights in the aforesaid copyright and in the aforementioned work, both as to words and music[.]" (Id. ¶ 3.) Mitchell argues that the Mechanical License creates a genuine issue of material fact, as Mitchell is acknowledged as the owner of the copyright in the agreement.
However, the Court finds that this document fails to create a genuine issue of fact as to the ownership of the copyright to the sound recording. The Mechanical License acknowledges that Mitchell owns the copyright to the "musical work" entitled "A Star in the Ghetto." The document does not provide a definition of "musical work," but the term "musical work" is the exact term used in the Copyright Act to describe a copyright in a musical composition. 17 U.S.C. § 102(a)(2). The Copyright Act has a separate classification for copyrights of "sound recordings." Id. at § 102(a)(7). Further, the agreement twice mentions that this work includes the words and music to "A Star in the Ghetto." (Id. ¶¶ 1, 3.) Words and music to a song may be copyrighted as a musical composition or work, but not as a sound recording. (See Copyright Certificate [DN 91-1] at 2) (indicating that a musical composition "includes compositions consisting of music alone, or
Mitchell argues that "[t]he Mechanical License clearly provides that `the work' which is the subject of the agreement between Mr. Mitchell and Atlantic Records is specifically the Average White Band and Ben E. King sound recording of `A Star in the Ghetto.'" (Pl.'s Response [DN 94] at 2 n. 2.) However, he does not extrapolate on what makes this so clear. In fact, the definition of "mechanical licensing" he offers tends to confirm that the "work" was the musical composition, not the sound recording. Mitchell cites to Bridgeport Music v. Agarita Music, 182 F.Supp.2d 653, 656 n. 4 (M.D. Tenn. 2002), and its statement that "`[m]echanical licensing' is a music industry term that describes a license from the copyright holder for use of its composition in a sound recording in return for payment of a royalty" (emphasis added). Under this definition, Mitchell is the "copyright holder," and he is licensing "the use of [his] composition" to Atlantic for use "in a sound recording," specifically the sound recording of "A Star in the Ghetto" by Ben E. King and the Average White Band. Thus, while the document suggests that Mitchell owned a copyright, it does not suggest that this copyright is one in the sound recording of "A Star in the Ghetto," but rather one in his musical work or composition "Star in the Ghetto," as he was licensing the right to use that composition in the sound recording.
Mitchell's other evidence that he owned the copyright to the sound recording also fails to raise a genuine dispute as to the issue of ownership. He presents various phonograph labels and album sleeves that include the sound recording of "A Star in the Ghetto" and have visually placed directly under the song title some variation of "(By Phillip Mitchell, Hot Stuff Music Publishing Co.)," "(Phillip Mitchell)," or "(Mitchell)." (See Album Cover [DN 94-6] at 2; Labels [DN 94-7] at 1-6.) But he cites to no specific authority demonstrating that this notation is associated with ownership of a copyright in sound recording.
Nor does Mitchell explain how a letter to him from Atlantic Records president Gerald Greenberg in 1977 demonstrates his ownership of the copyright for the sound recording. The letter reads, "Think we cut a smash on GHETTO! Hope you agree. Looking forward to starting our relationship with you as an artist. Enclosed is just a little something in appreciation for writing such a great song." (Greenberg Letter [DN 94-5] at 1.) Certainly, this is evidence that Mitchell wrote "Star in the Ghetto;" there is ample evidence
Based on the evidence presented by Mitchell, the Court cannot conclude that there is any dispute as to the ownership of the copyright to the sound recording, as all of the evidence submitted by Mitchell indicates that he owned the copyright to the musical composition but not the sound recording. As such, Mitchell's arguments that the defendants are not entitled to judgment as a matter of law must also fail, as those arguments are premised upon Mitchell owning the copyright to the sound recording.
For these reasons,
(1) The motion by defendants Capitol and Young for partial summary judgment as to damages (DN 88) is
(2) The motion by defendants Capitol and Young for partial summary judgment as to ownership of the copyright of the sound recording (DN 91) is
(3) The motion by defendants Capitol and Young for leave to file supplemental authority (DN 113) is