October 10, 2007

Last Friday, the U.S. Circuit Court of Appeals for the Second Circuit ruled that copyright infringement claims may proceed against Mary J. Blige. This case began in December, 2003, when songwriter Sharice Davis filed suit against Blige and a number of music publishers and distributors, claiming that Blige used two of her songs on her 2001 album “No More Drama.” Davis’s complaint alleged that the defendants infringed her copyright to the two compositions by recording and subsequently registering copyrights on two Mary J. Blige songs, and for falsely attributing authorship to some of the individual defendants. She also alleged that the defendants falsely designated the origin of their goods (in violation of the Lanham Act § 43(a), 15 U.S.C. § 1125(a)), engaged in unfair competition, were unjustly enriched, and that their acts were intentionally designed to mislead the public in violation of a New York statute.

Following discovery, the defendants moved for summary judgment on the grounds that Chambliss, a co-author with Davis of the two compositions allegedly infringed by the defendants, transferred his rights to the disputed compositions to one of the defendants (Miller) via oral agreement before the compositions were used by Miller, or, in the alternative, that the written transfer agreements (executed after suit was filed) retroactively conveyed the copyrights to Miller. This retroactive transfer conveyance, according to the defendants, made Miller a co-owner of the compositions as of the date of the creation of the compositions. As such, the defendants argued, Davis's suit is barred against Miller and those parties to whom Miller licensed the disputed compositions (including Blige and other named defendants), because Davis cannot sue a co-owner of the copyright for infringement.

The U.S. District Court for the Southern District of New York granted the defendants’ motion for summary judgment, agreeing that because the transfer agreements were in place, Davis became a co-owner of the disputed compositions with Miller, effectively barring her suit against Miller and others. In its 2005 memorandum and order, the District Court declined to determine whether the written ratification of a prior oral transfer could satisfy the Copyright Act’s requirement that transfers of copyright ownership be in writing (17 U.S.C. § 204(a)) or whether the transfer agreements indeed ratified a prior oral agreement between Chambliss and Miller, instead holding that Chambliss could “cure past infringement” through the grant of a retroactive assignment of the copyright.

The Second Circuit disagreed, holding that a written confirmation of an earlier oral transfer agreement cannot extinguish a copyright owner’s accrued infringement claims. As noted by the New York Law Journal article (law.com via Yahoo!, link below), the Second Circuit noted that an action for infringement against a co-author of a song could not "be defeated by the 'retroactive' transfer of copyright ownership from another co-author to an alleged infringer." In its conclusion, the Second Circuit stated that “[i]nasmuch as the alleged retroactive written agreements purporting to transfer Chambliss’s copyright interests to Miller could not also transfer Davis’s copyright interests, Davis’s accrued causes of action for infringement were not affected by the agreement between Chambliss and Miller.” Because the District Court was deemed to have erred in its grant of summary judgment, the District Court’s order was vacated and the case was remanded for proceedings consistent with the opinion.

Law.com Article (via Yahoo!): LINK
Second Circuit Opinion (Davis v. Blige): LINK


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