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April 3, 2000


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 Orchestra.

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 United States.
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 States.
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 consideration.

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 made.
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 respects.

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.

The Virgin/Island Defendants have pressed that Armstrong's Lanham Act claim should be dismissed because (1) it is duplicative of his claim for copyright infringement; (2) Armstrong fails to assert any consumer confusion, as is required under the Lanham Act; and (3) the Lanham Act may not be applied extraterritorially as against Virgin UK, Island, and Massive Attack. In its papers, the EMI Group presses points (1) and (2), but not the third claim regarding extraterritoriality.

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 ...

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