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TUFF-N-RUMBLE MANAGEMENT v. SUGARHILL MUSIC PUB.

November 22, 1999

TUFF-N-RUMBLE MANAGEMENT, INC., D/B/A TUFF CITY RECORDS, PLAINTIFF,
v.
SUGARHILL MUSIC PUBLISHING INC., SUGAR HILL RECORDS, LTD., SUGAR HILL RECORDS, INC., SUGAR HILL MUSIC, INC. AND SUGAR HILL MUSIC PUBLISHING, LTD., DEFENDANTS.



The opinion of the court was delivered by: Sweet, District Judge.

OPINION

Before the Court are several motions by plaintiff Tuff-n-Rumble Management, Inc. d/b/a/ Tuff City Records ("Tuff"), which seeks (1) to dismiss several counterclaims of defendants Sugarhill Music Publishing Inc., Sugar Hill Records Ltd., Sugar Hill Records, Inc., Sugar Hill Music, Ltd., Sugar Hill Music, Inc., Sugar Hill Music Publishing, Ltd., Twenty Nine Black Music, and Joseph Robinson, Sr. ("Defendants"); (2) to strike Defendants' demand for a jury trial; (3) an award of summary judgment on the claim of copyright infringement; (4) to establish a variety of factual findings on the basis of Defendants' failure to comply with discovery requirements; and (5) various requests for attorney's fees, costs, and sanctions. For the reasons set forth below, the motions will be granted in part and denied in part.

Prior Proceedings

The facts and prior proceedings in this action have been set forth in two decisions of this Court, familiarity with which is assumed. See Tuff-N-Rumble Management, Inc. v. Sugarhill Music Publ'g Inc., 49 F. Supp.2d 673 (S.D.N.Y. 1999) ("Tuff-N-Rumble II"); Tuff-N-Rumble Management, Inc. v. Sugarhill Music Publ'g Inc., 8 F. Supp.2d 357 (S.D.N.Y. 1998) ("Tuff-N-Rumble I"). Facts and proceedings relevant to the instant motions are set forth below.

Tuff filed a complaint against Defendants alleging copyright infringement, violation of the Lanham Act, tortious interference with prospective economic advantage, and unfair business practices in violation of New York General Business Law on October 17, 1997. Defendants filed an answer and six counterclaims on March 9, 1998, alleging copyright infringement, interference with prospective economic advantage, tortious interference with contract, slander of title, defamation, and malicious prosecution.

On March 26, 1998, Tuff filed a motion to dismiss Defendants' six counterclaims. By opinion and order dated June 15, 1998, the Court granted the motion with regard to the counterclaim for malicious prosecution, but denied it with regard to the other counterclaims.

On December 15, 1998, Tuff moved to amend the complaint to join additional defendants. The motion was granted by order dated January 27, 1999. The amended complaint was filed on February 3, 1999.

On December 17, 1998, Tuff moved to dismiss for lack of subject matter jurisdiction Defendants' counterclaim of copyright infringement, and to award summary judgment dismissing Defendants' counterclaims for tortious interference and defamation, and Defendants' affirmative defense of prior transfer. On February 17, 1999, Defendants moved to strike Tuff's amended complaint. These motions were decided together in an opinion issued by the Court on May 24, 1999, granting Tuff's motion to dismiss Defendants' counterclaim for copyright infringement, and awarding Tuff summary judgment on Defendants' affirmative defense of prior transfer, but denying Tuff's motion on the counterclaims of tortious interference and defamation on the grounds that factual questions remained. Defendants' motion to strike was denied.

On June 14, 1999, Defendants filed an answer to Tuff's amended complaint and reasserted counterclaims of interference with prospective economic advantage, interference with contractual relations, slander of title, and defamation. Defendants also reasserted the previously-dismissed affirmative defense of prior transfer and counterclaim of copyright infringement, changing the allegations to state that Tuff had actual knowledge of the prior transfer. The answer also demanded, for the first time, a jury trial.

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.

Facts

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.

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 ...


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