Also on June 14, 1999, Tuff filed the instant "omnibus" motion
"in limine" requesting that the Court establish factual findings
with regard to various alleged infringements on the part of
Defendants since Defendants had allegedly failed to respond to
repeated requests for discovery. On June 29, 1999, Tuff filed the
instant motion to dismiss Defendants' counterclaim for copyright
infringement and its affirmative defense of prior transfer, to
strike the jury demand, and for attorney's fees. On July 21, Tuff
filed the motion for sanctions. These motions were taken on
submission. Answer and reply papers were received, and the
motions were deemed fully submitted as of July 21, 1999.
On August 9, Tuff filed the instant motion for summary
judgment. Answer and reply papers were received, and oral
argument was heard on September 15, 1999, at which point the
motion was deemed fully submitted.
The facts as set forth below are drawn from Tuff's Rule 56.1
Statement, and from supporting affidavits and declarations of
Tuff and Defendants.*fn1
The dispute between Tuff and Defendants focuses on the
ownership of the copyright to the composition and the master
recording of the song "Spoonin' Rap" (the "Composition") by
Gabriel Jackson, a/k/a Marion Jackson, professionally known as
Spoonie Gee ("Jackson"). In November 1979, Jackson and Peter
Brown ("Brown"), the alleged owner of Queen Constance Records and
Heavenly Crown Music, recorded the Composition. Jackson allegedly
entered into an "Exclusive Songwriters Agreement," dated November
1, 1979, with Heavenly Crown Music ("Heavenly Crown"), granting
Heavenly Crown the exclusive rights to the Composition. Brown
subsequently released the Composition throughout the United
States. The Composition apparently enjoyed some minor success
within the industry.
On June 9, 1980, Brown allegedly assigned both the publishing
rights and the rights to the master recording of the Composition
to Joseph Robinson, Sr. ("Robinson") on behalf of Sugar Hill
Records, Ltd. and Sugar Hill Music, Ltd. The alleged assignment
of rights was allegedly memorialized in two assignment contracts.
Photocopies of the two alleged assignment contracts, as well as
of the Exclusive Songwriters Agreement, were produced by
Defendants in the course of discovery. However, Tuff's forensic
document examiner, expert Paul A. Osborn, cast sufficient doubt
on the authenticity of the signatures on the agreements to
discredit them. The discrediting is reinforced by the fact that
Defendants do not in any way contest the findings of Osborn, nor
have Defendants, apparently, been willing to disclose the
originals of the agreements (if such exist) to disprove the
allegations of fraud and/or forgery. Under these circumstances,
the documents can carry no probative weight.
It is undisputed that Brown entered into an agreement with Tuff
on June 27, 1988 to assign all rights, title, and interest in the
Composition to Tuff for $200.00.
In November 1993, Defendants contacted Tuff, stating that
Defendants owned the Composition. To demonstrate ownership,
Defendants provided Tuff with two
copyright registrations — one purporting to cover the "master"
component and one purporting to cover the "composition"
component. These same purported copyright registrations were also
shown to various third parties to demonstrate ownership.
The copyright registrations, however, were not genuine, as Tuff
was informed by the United States Copyright Office. The
registrations covered a different song, "Spoonie Is Back." On
December 30, 1993, Tuff received a letter from the Copyright
Office informing Tuff that no registration for the Composition
existed from 1978 through November 26, 1993. On August 23, 1994,
Tuff registered the Composition with the Copyright Office.
On August 18, 1995, Defendants recorded with the Copyright
Office the purported assignment of the rights to the Composition
from Brown to Defendants on June 9, 1981.
I. Defendants' Affirmative Defense of Prior Transfer and
Counterclaim of Copyright Infringement Are Dismissed
A. Prior Transfer
In a prior opinion, the Court dismissed the defense of prior
transfer. See Tuff-N-Rumble II, 49 F. Supp.2d at 680-81. The
renewed defense alleges actual, as opposed to constructive,
notice of prior transfer.
The Court need not address Tuff's claims that the renewed
defense is barred by the doctrines of the law of the case, res
judicata, and collateral estoppel. Defendants have placed no
facts before the Court which were not considered in deciding the
previous motion to dismiss this defense. There is thus no basis
for revisiting the previous decision. Tuff was on neither actual
nor constructive notice of a prior transfer, because the
purported notice consisted of duplicates of copyright
registrations revealed to be fraudulent. The affirmative defense
of prior transfer is again dismissed.
B. Copyright Infringement
Similarly, nothing in the answer to the amended complaint or
otherwise before the Court requires revisiting the prior
dismissal of the counterclaim for copyright infringement.
Defendants still lack copyright registration of the Composition
and thus lack the "jurisdictional prerequisite to an infringement
suit." Tuff-N-Rumble II, 49 F. Supp.2d at 677 (internal
quotation marks omitted). Defendants' recordation in 1995 with
the Copyright Office of the purported assignment of rights from
Brown to Defendants in 1981 does not constitute copyright
registration under the statute. Recordation is covered under
17 U.S.C. § 205; registration is covered under 17 U.S.C. § 408-410.
See also 37 C.F.R. § 201 (1999). Defendants cite no authority,
nor has this Court discovered any, suggesting that recordation of
the transfer of copyright suffices to meet the jurisdictional
prerequisite. The counterclaim for copyright infringement is
II. Tuff's Motion to Strike Defendants' Jury Demand Is
Under Federal Rule of Civil Procedure 38, failure to make a
jury demand within 10 days after the close of the original
pleadings constitutes a waiver of a party's right to a jury trial
as to all issues relating to the general area of dispute. See
Fed.R.Civ.P. 38(b), (d); Anaconda-Ericsson v. American Dist.
Tel. Co., 101 F.R.D. 13, 15 (E.D.N.Y. 1984). "In this Circuit,
amendments to the pleadings revive the right to a jury trial only
if the amendments involve new issues or change the original
issues." Sunenblick v. Harrell, 145 F.R.D. 314, 316-17
(S.D.N.Y. 1993) (citing Berisford Capital Corp. v. Syncom
Corp., 650 F. Supp. 999, 1001 (S.D.N.Y. 1987)). "[I]f the amended
pleadings concern the same `general area of dispute' as was
raised in the original pleadings," the right to a jury trial is
not revived. Id. at 317 (quoting Lanza v. Drexel & Co.,
the "mere addition of parties does not change the underlying
claims or the nature of the relief desired and, therefore, does
not revive [a party's] right to a jury trial." Id. at 317.
Tuff did not demand a jury trial in its original complaint
filed on October 17, 1997, nor did Defendants in their answer of
February 22, 1998. Defendants demanded a jury trial for the first
time in this action on April 21, 1999 in a conference with the
Court, and subsequently included a demand for a jury trial in
their answer to Tuff's amended complaint. As the Court previously
indicated, Tuff's amended complaint does not differ substantively
from its original complaint. See Tuff-N-Rumble II, 49 F. Supp.2d
at 682. Nor does Defendants' answer. As indicated above,
Defendants have raised the same affirmative defenses and
counterclaims, save for the counterclaim of malicious prosecution
which the Court previously dismissed. The slight change in
Defendants' allegations — that Tuff had actual, as opposed to
constructive, notice of prior transfer — and the addition of new
defendants do not raise new issues or change the original issues.
Defendants therefore have not met the standard required to revive
the right to a jury trial, and Tuff's motion to strike is
III. Tuff's Motion For Summary Judgment Is Granted
A. The Standard For Summary Judgment
Rule 56(c) of the Federal Rules of Civil Procedure provides
that a motion for summary judgment may be granted when "there is
no genuine issue as to any material fact and that the moving
party is entitled to a judgment as a matter of law." The Second
Circuit has repeatedly noted that "as a general rule, all
ambiguities and inferences to be drawn from the underlying facts
should be resolved in favor of the party opposing the motion, and
all doubts as to the existence of a genuine issue for trial
should be resolved against the moving party." Brady v. Town of
Colchester, 863 F.2d 205, 210 (2d Cir. 1988) (citing Celotex
Corp. v. Catrett, 477 U.S. 317, 330 n. 2, 106 S.Ct. 2548, 91
L.Ed.2d 265 (1986) (Brennan, J., dissenting)); see Tomka v.
Seiler Corp., 66 F.3d 1295, 1304 (2d Cir. 1995); Burrell v.
City Univ., 894 F. Supp. 750, 757 (S.D.N.Y. 1995). If, when
viewing the evidence produced in the light most favorable to the
nonmovant, there is no genuine issue of material fact, then the
entry of summary judgment is appropriate. See Burrell, 894
F. Supp. at 758 (citing Binder v. Long Island Lighting Co.,
933 F.2d 187, 191 (2d Cir. 1991)).
Materiality is defined by the governing substantive law. "Only
disputes over facts that might affect the outcome of the suit
under the governing law will properly preclude the entry of
summary judgment. Factual disputes that are irrelevant or
unnecessary will not be counted." Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
"[T]he mere existence of factual issues — where those issues are
not material to the claims before the court — will not suffice to
defeat a motion for summary judgment." Quarles v. General Motors
Corp., 758 F.2d 839, 840 (2d Cir. 1985).
B. Summary Judgment Is Appropriate
Tuff seeks summary judgment on its cause of action that
Defendants infringed upon Tuff's copyright to the Composition.
Tuff's claim is based upon the federal Copyright Act,
17 U.S.C. § 101 et seq. 17 U.S.C. § 106 sets forth the pertinent exclusive
rights of the owner of a copyright of a musical work under the
Subject to sections 107 through 120, the owner of
copyright under this title has the exclusive rights
to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or
(2) to prepare derivative works based upon the
(3) to distribute copies or phonorecords of the
copyrighted work to the
public by sale or other transfer of ownership, or
by rental, lease, or lending;
Tuff alleges that Defendants have interfered with Tuff's rights
by improperly authorizing third parties to make and distribute
copies of, or to create derivative works based upon, the
Composition, and by interfering with Tuff's right to do the same.