Bit Parts

Copyright Infringement Claim Doesn't Extend to Foreign Release of Song

The U.S. District Court for the Southern District of New York granted a motion, under Rule 12(c) of the Federal Rules of Civil Procedure, to dismiss on the pleadings a copyright infringement suit against Sanctuary Records (SRGL) over the label's release in Europe of a CD box set containing the U.S. plaintiff's song. Roberts v. Keith, 04 CV 10079(LAP). In 1978, songwriter Mark Roberts sent three songs, including “Baby Let's Talk Now, Dance Later,” to Tommy Keith, who produced R&B vocal group the Moments. Roberts claimed Keith planned to use the songs on Keith's solo album but never did. Roberts learned in 2003 from BMI.com that Keith listed himself, not Roberts, as author of the songs. In 2004, Roberts sued over the release of The Sugar Hill Records Story CD box set that included the 1980 track “Baby Let's Rap Now, Dance a Little Later” by former Moments member Harry Ray recording as the Moments. Chief Judge Loretta A. Preska noted: “Here, the [c]omplaint falls short of making any clear allegation that SRGL engaged in infringing activity in the United States. ' [T]he only specific allegations concerning SRGL, or its record labels Castle and Sequel, are that they re-released the album, Sugarhill Street Soul, in the United Kingdom and Europe. ' First, paragraph 37 [of Roberts' complaint] makes only the general allegation that [d]efendant Sequel engages in the business of reissuing catalogue materials in the United Kingdom and the United States. The paragraph does not allege that Sequel re-issued the specific copyrighted material that is the subject matter of this lawsuit in the United States.”

Record Label Denied Request to Block Use of Band Name in Live Performances

The U.S. District Court for the Northern District of Illinois refused to grant a record label's motion for a preliminary injunction to bar the musical group Alacranes Musical from using the band name and logo when performing in concert. Aguila Records Inc v. Nueva Generaci'n Music Group Inc. , 09 C 3399. Aguila Records had federally registered the Mexican music band name and logo for certain uses (though not for live performances) in 2006 and 2008. District Judge James B. Zagel noted band founders Oscar Urbina Sr. and Jr. “began performing as Alacranes Musical in 1995, and they had made four albums prior to signing with Aguila Records. ' This is strong evidence that the Urbinas are in fact the senior users and that they will be able to rebut the presumption of ownership established by virtue of the registrations.” Judge Zagel continued that Aguila Records “also posits that after signing, [the record label owner Pedro] Avila did in fact exert the requisite influence over the group's content and style to be trademark owner. It is true that Avila did, during that time, pay [d]efendants a weekly salary, cover their expenses, book the gigs, make recording suggestions, and order the songs on the CDs; however, at the time this occurred, the evidence suggests that Alacranes Musical had already appropriated its name and used it in commerce.” The court also found: “There is little evidence of any meeting of the minds with regard to any transfer of ownership or assignment of rights in the name.” But Judge Zagel nevertheless noted: “Although [p]laintiff does not demonstrate a strong likelihood of success on the merits of its claim, it does demonstrate a 'greater than negligible chance of winning ' I am [preliminarily] enjoining [d]efendants from using the registered materials for the purposes specified in the registrations, namely on prerecorded compact disks, audio and video disks and cassettes as well as on any merchandise including T-shirts, hats, jackets and shirts.”

U.S. Court Lacks Jurisdiction to Decide Copyright Claim over European Distribution of Sheet Music

The U.S. District Court for the District of New Jersey ruled that it lacked subject matter jurisdiction over a copyright infringement suit brought by a sheet-music publisher alleging unauthorized distribution in Europe by a U.S. based distributor. Music Sales Ltd. v. Charles Dumont & Sons Inc., 09-1443 (RMB/JS). District Judge Renee Marie Bumb explained: “Here, [p]laintiffs' entire argument can be reduced to the simple proposition that the distribution of sheet-music from the United States into Europe is not 'extraterritorial.' The argument, alluring as the music of the mythical Sirens, is misleading in its simplicity. In short, [p]laintiffs are asking the [c]ourt to hold that any act occurring within the United States that causes the unauthorized use of copyrighted material abroad is actionable under the Copyright Act. This strikes a discordant note. ' Because [d]efendant apparently possesses distribution rights of the sheet-music within the United States, however, [p]laintiffs have not alleged that the sheet-music was copied unlawfully. Accordingly, no predicate infringing act occurred within the United States.” Judge Bumb further noted the parties to the suit agreed that a provision of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 adding an exportation right to the Copyright Act didn't apply in this case. Section 602 of the Copyright Act prohibits the “exportation of infringing items ' from the United States ' of copies ' the making of which ' constituted an infringement of copyright.” The district judge warned that “enabling those in [p]laintiffs' position to bring suit in United States courts would open the floodgates to an unmanageable number of new actions.”