Infringement Action Over Notorious B.I.G.'s 'The What' Gets Dismissed

According to Judge Sullivan's ruling in Hutson v. Notorious B.I.G. LLC, 14-cv-2307, Curtom Records Co. released an album in 1973 by Hutson that featured “Can't Say Enough About Mom.” Curtom Records Co. registered a copyright for the sound recording in 1974. At the time, Hutson was under a contract with Curtom Records that lasted until 1979. More than 20 years later, in September 1994, record company Bad Boy Entertainment released Notorious B.I.G.'s debut album,, including the song “The What.” And nearly two decades after that, in 2012, Hutson said he discovered that “The What” included an allegedly unauthorized sample of “Can't Say Enough.”

Hutson brought suit in April 2014 against composers, publishers and distributors of the Notorious B.I.G. song, claiming they infringed on the composition and sound recording copyrights of the 1973 Hutson song.

Hutson claims he is the copyright owner of 50% of the rights to the 1973 composition. But in his ruling, Sullivan said he found Hutson failed to plausibly allege that he owned a copyright interest in the composition at the time of the alleged infringement, 1994 to the present, or was subsequently transferred copyright ownership.

According to the court ruling, Hutson said he agreed in 2003 with music publishing companies Silent Giant Publishing Co. (SGP) and another entity, Windswept Holdings, to sell, assign and deliver his rights in the composition to those entities, leaving Windswept and SGP each with a 50% interest in the copyright of the Hutson composition.

Because Hutson claimed he “does business as” SGP, Hutson asserted he owned 50% interest in the copyright composition. However, Judge Sullivan noted that shortly after Hutson's album release, music publishing companies SGP and Aopa Publishing Co. registered in 1973 for a composition copyright in “Can't Say Enough.”

Judge Sullivan said Hutson had not explained how or when Aopa or SGP transferred the initial composition copyright to Hutson that would allow him to transfer it through the Windswept agreement in the first place. Accordingly, the district judge dismissed Hutson's composition infringement claim that occurred between 1994 and 2003. He also found Hutson lacked standing to sue for alleged infringement that occurred after 2003.

Even if Hutson had a valid copyright in the composition that he could transfer through the Windswept agreement, he failed to allege that he, as opposed to SGP, owned the copyright in the composition after the transfer, the judge said. Hutson's claim that he does business as SGP is contradicted by SGP's articles of incorporation, which identifies SGP as a separate corporate entity with independent legal obligations distinct from its officers, But Judge Sullivan found that stake stays with Silent Giant as a corporation and does not transfer to Hutson individually. “Despite plaintiff's allegations to the contrary, the copyright registration clearly reflects that Aopa and SGP ' not plaintiff ' registered the copyright in the composition,” Sullivan wrote.

Judge Sullivan also found that Hutson failed to plead ownership in the “Can't Say Enough About Mom” sound recording. In 2007, Hutson had sued Rhino Entertainment Co., a subsidiary of co-defendant Warner Music Group, for infringement of several of his songs and recordings. The district judge explained: “In December 2008, Plaintiff entered into the Settlement Agreement with Rhino and Warner Records in order to resolve 'any past or present or future controversies that have arisen or may arise concerning' the sound recordings as to which there was a dispute in ownership, including the Sound Recording of 'Can't Say Enough.' The Settlement Agreement acknowledged that Rhino 'owns all right, title, and interest' to the sound recordings described in the agreement, including 'all the master sound recordings over which [Plaintiff] claimed to have obtained ownership pursuant to' the 1989 Curtom [Records] Transfer [of the master recording rights] to Hutson.”

The 2008 settlement deal further stated it “forever release[d] and discharge[d]' Rhino and Warner Music from 'any and all claims ' and causes of action, whether past, present or future ' at law or in equity, arising out of or related to any acts or omissions occurring prior to the execution of this Agreement.” Judge Sullivan thus found, “Since Plaintiff's claims against WMG clearly fall under the broad language of the Settlement Agreement, Plaintiff may not now renew claims that were settled in 2008.”

The settlement agreement also stipulated that Hutson transferred to Rhino his 'entire right, title, and interest in ' any and all rights to sue at law or in equity for any infringement, impairment or other unauthorized use' of the sound recordings. In light of this, as to any pre-2008 claims Hutson alleged in the “Can't Say Enough” recording, Judge Sullivan explained: “Although ordinarily a transfer of copyright will be deemed to include accrued causes of action only if they are 'expressly included in the assignment,' ' the transfer at issue here occurred in the context of a dispute concerning the ownership of 'all the master sound recordings over which [Plaintiff] claimed to have obtained ownership pursuant to' the 1989 Curtom Transfer. By resolving that ownership dispute in Rhino's favor in a Settlement Agreement which sought to resolve 'any past or present or future controversies that have arisen or may arise concerning' the Sound Recording, the Settlement Agreement clearly provided Rhino with the exclusive right to pursue causes of action for past infringement of the Sound Recording. To hold otherwise would render the Settlement Agreement meaningless, since it would leave past and present controversies unresolved, while inviting, rather than resolving, future controversies between Rhino and Plaintiff.”

The district court also dismissed Hutson's remaining claims, including for injunctive relief and attorney fees.

Nixon Peabody partners Staci Jennifer Riordan and Julian Petty in Los Angeles represented most of the defendants, including the estate, Bad Boy Entertainment and music publishing companies. In an interview, Riordan said Hutson contacted her clients in 2012 about his claims and had extensive discussions since. Riordan added that the fact Judge Sullivan dismissed the case without allowing Hutson to amend the complaint is an uncommon move, showing a “very strong indication that Hutson's case lacked merit.” The motion to dismiss had been pending for 14 months.

Defendant UMG Recordings Inc., which distributed the Ready to Die album, was represented by Jenner & Block partner Andrew Bart.

Hutson's attorney is Alan Clarke of the Entertainment Law Group in Atlanta. declined to comment.

Christine Simmons is the Business of Law Reporter at the New York Law Journal, an ALM sibling of this newsletter. Marisa Kendall of The Recorder contributed to this article.