The opinion of the court was delivered by: Sweet, D.J.
Plaintiff Ralphe A. Armstrong ("Armstrong") has moved, pursuant
to Rule 56 of the Federal Rules of Civil Procedure, for summary
judgment striking various affirmative defenses raised by the
defendants in this action. In turn, defendants EMI Group, plc
("EMI Group"), Virgin Records Ltd. ("Virgin UK"), Virgin Records
America ("Virgin America"), Island Music, Ltd. ("Island"), and
Robert Del Naja, Grantley Marshall, and Andrew Vowles, jointly
doing business as "Massive Attack" ("Massive Attack"), have moved
for summary judgment dismissing or delimiting a number of
Armstrong's claims. For the reasons set forth below, these
motions are granted in part and denied in part.
Facts and Prior Proceedings
For the purposes of the motions presently under consideration,
the facts set forth below are not in serious dispute, except
where otherwise indicated.
Armstrong is a professional entertainer and well-regarded jazz
musician, as well as a college music professor. In the 1970's, he
made various recordings with an ensemble known as the Mahavishnu
Massive Attack is a musical group whose members are British
citizens residing in the United Kingdom. In 1990, Massive Attack
recorded an album entitled "Blue Lines" ("the album" or "Blue
Lines") in England pursuant to a recording agreement with Virgin
UK, a corporation organized under the laws of the United Kingdom.
Virgin UK's principal offices are located in London.
One of the tracks on "Blue Lines" was a recording of a musical
composition entitled "Unfinished Sympathy" ("Unfinished Sympathy"
or "the song"). That composition was credited as being written
by the members of Massive Attack, as well as two other
individuals — J. Sharp ("Sharp") and S. Nelson ("Nelson").
Neither Sharp nor Nelson is a party to this action. Island, a
United Kingdom corporation with its principal offices in London,
obtained worldwide copyrights for Massive Attack's compositions,
including "Unfinished Sympathy."
The "Blue Lines" album was released in 1991 by Virgin UK in
England and Ireland. Under an agreement between Virgin UK and EMI
Services, which is not a party to this action, the master
recordings embodied on "Blue Lines" were in turn licensed by EMI
Services to other companies around the world for manufacturing
and distribution. EMI Services ultimately licensed defendant
Virgin America to manufacture and distribute the album in the
Subsequent to its release on "Blue Lines," "Unfinished
Sympathy" enjoyed significant success. In 1993, "Unfinished
Sympathy" was included in the motion picture "Sliver," which
featured actress Sharon Stone, as well as on the soundtrack album
of that film. The "Sliver" soundtrack album subsequently achieved
"gold" record status, due to its brisk sales in the United
As with "Blue Lines," the "Sliver" soundtrack album was
released in the United Kingdom and Ireland by Virgin UK, and in
the United States by Virgin America. Mechanical licenses were
issued in the United Kingdom and Ireland by MCPS, on behalf of
Island, and in the United States by Fox, on behalf of the United
States publishers of the composition. Additionally, in 1996,
defendant Leagas Delaney ("Delaney") licensed "Unfinished
Sympathy" for use in a television commercial it ultimately
produced for defendant adidas America ("adidas").
On July 1, 1998, Armstrong filed his complaint in this action,
alleging three causes of action: (1) a claim for copyright
infringement under the Copyright Act; (2) a claim for
infringement under unspecified "international" copyrights; and
(3) a Lanham Act claim against all defendants other than adidas
and Leagas Delaney. More specifically, Armstrong alleged that
Massive Attack's recording of "Unfinished Sympathy" contains an
infringing sample from a composition recorded by the Mahavishnu
Orchestra on its 1978 album "Inner Worlds." According to
Armstrong, that composition, entitled "Planetary Citizen," was
created and written by Armstrong prior to 1975.
On August 23, 1999, Armstrong moved for an order, pursuant to
Rule 56(d), Fed. R. Civ. P., striking various of the defendants'
affirmative defenses based upon the statute of limitations,
laches, waiver, estoppel, and lack of subject matter
jurisdiction. In addition to submitting opposition to that
motion, several of the defendants in this action cross moved for
partial summary judgment. By motion filed on September 30, 1999,
defendant EMI Group moved for an order, pursuant to Rule 56,
dismissing Armstrong's Lanham Act claim in its entirety, as well
as dismissing Armstrong's claim under the Copyright Act to the
extent that it seeks recovery for any infringement occurring
prior to July of 1995. By motion filed on October 7, 1999,
defendants Virgin UK, Virgin America, Island, and Massive Attack
(collectively the "Virgin/Island Defendants" for lack of a more
appropriate moniker) similarly moved for (1) summary judgment
dismissing all claims against Virgin UK and Island for lack of
subject matter and personal jurisdiction; (2) summary judgment
dismissing Armstrong's foreign copyright claims and Lanham Act
claims against Massive Attack in their entirety for lack of
subject matter jurisdiction; and (3) partial summary judgment
dismissing Plaintiff's claims under the Copyright Act for any
period prior to July of 1995, and dismissing Armstrong's Lanham
Act claim in its entirety. On October 14, 1999, Armstrong also
filed a motion to strike various affidavits submitted by EMI
Group and the Virgin/Island Defendants (collectively the "moving
defendants") in connection with the motions presently under
While defendants adidas and Leagas Delaney did not follow suit
and submit their own motions for partial summary judgment, they
have submitted opposition to Armstrong's Rule 56 motion.
Oral argument on these respective motions was heard on October
28, 1999, at which time they were deemed fully submitted.
The principal questions presented are (1) whether subject
matter jurisdiction could exist over Armstrong's copyright
claims, both foreign and domestic; (2) whether this Court could
possess personal jurisdiction over defendants Island and Virgin
UK; (3) whether any or all of Armstrong's claims under domestic
copyright law are necessarily barred by the relevant statute of
limitations; (4) whether Armstrong's claims could be barred by
the equitable defenses of laches, waiver, or estoppel; and (5)
whether Armstrong's Lanham Act claim can withstand challenge.
While Armstrong has also moved, on evidentiary grounds,*fn1 to
strike various portions of the record developed by the
defendants, the merits of that motion shall not be separately
addressed, since the nature of the Court's inquiry automatically
requires an evaluation of the potential admissibility and
relevancy of the parties' submissions.
As it has often been observed, summary judgment is appropriate
only where the evidence is such that a reasonable jury could not
return a verdict in favor of the non-moving party. See Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 250-51 (1986). Under Rule
56(c), Fed. R. Civ. P., it shall be rendered "forthwith if the
pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits . . . show that
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." As
the Second Circuit has explained:
"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." However, where the nonmoving party will bear
the burden of proof at trial, Rule 56 permits the moving party
to point to an absence of evidence to support an essential
element of the nonmoving party*s claim.
Bay v. Times Mirror Magazines, Inc., 936 F.2d 112, 116 (2d Cir.
1991) (quoting Brady v. Town of Colchester, 863 F.2d 205, 210 (2d
Cir. 1988) (internal citations omitted).
It is worth noting at the outset that both Armstrong and the
defendants have, at points, noted that formal discovery has yet
to commence in this action, and that this failure to obtain
discovery prevents resolution of certain of the matters presently
before the Court. Predictably, the parties make this point at
certain junctures but not others, depending upon the claim being
As discussed below, this failure to obtain discovery prior to
engaging in motion practice has rendered the moving parties'
respective motions of questionable utility. Other than granting
the Virgin/Island and EMI Group Defendants' request to dismiss
Armstrong's Lanham Act claim, the Court denies the motions in all
Armstrong's Lanham Act Claims
Because the moving defendants' challenges to Armstrong's Lanham
Act claims lend themselves to expeditious resolution, these shall
be addressed first.
In addition to challenging the second and third points of
contention listed above, Armstrong has disputed the moving
defendants' assertion that the Lanham Act claim raised in Count
III of his Complaint is duplicative of his copyright claims,
pressing that the claim "adds allegations of false descriptions
of authorship and copyright ownership in exploiting Unfinished
Sympathy that creates a false impression of the source of the
song and the recording." This argument is unavailing.
As the Honorable Constance Baker Motley summarized governing law
in Weber v. Geffen Records, Inc., 63 F. Supp.2d 458 (S.D.N.Y. 1999),
a case in which the plaintiff asserted both copyright and Lanham
Act claims in connection with the exclusion of his name from ...