United States District Court, S.D. New York
January 13, 2004.
DEMME ULLOA, Plaintiff,
UNIVERSAL MUSIC AND VIDEO DISTRIBUTION CORP.; ISLAND DBF JAM MUSIC GROUP; ROC-A-FELLA RECORDS, LLC; SHAWN CARTER d/b/a "JAY Z;" JOHN/JANE DOE; and DOE ENTITY, Defendants
The opinion of the court was delivered by: BARBARA JONES, District Judge
Plaintiff Demme Ulloa brings this action against Defendants Universal
Music and Video Distribution Corp., Island Def Jam Music Group,
Roc-A-Fella Records, LLC, and Shawn Carter (collectively "Defendants")
for copyright infringement, false designation of origin under the Lanham
Act, unjust enrichment, a declaration of joint authorship, and an
accounting of all relevant sales. On April 15, 2002, Defendants moved for
summary judgment, or, in the alternative, to bifurcate the case.
Plaintiff opposed Defendants' motion and made a cross motion for summary
judgment. As explained below, the Court grants Defendant's motion for
summary judgment, in part, and denies Plaintiff's motion for partial
The following facts are either undisputed or as alleged by Plaintiff.
In April 2001, Plaintiff Demme Ulloa was invited to Base-Line Recording
Studios by Samuel Barnes. Mr. Barnes is a friend and colleague of
Defendant Shawn Carter, who is professionally known as "Jay Z." At the
time Ms. Ulloa arrived at the recording studio, Mr. Carter was recording
a song, which was ultimately released on Mr. Carter's album Blueprint,
titled "Izzo (H.O.V.A.)" ("the Izzo song"). Mr. Barnes produced another
song on the Blueprint album, (Barnes Decl. ¶ 4), and although he did
not. produce the Izzo song, Mr. Barnes told Ms. Ulloa that he was
producing the Izzo song. (Ulloa Dep. at 209-10).
The Izzo song consisted of rapped lyrics by Mr. Carter, and an
instrumental riff,*fn1 which previously appeared in the Jackson Five
song, "I Want You Back" ("the Instrumental Phrase"). While at the studio
listening to the unfinished version of the Izzo song, Ms. Ulloa created a
countermelody to the Instrumental Phrase and spontaneously began singing
this countermelody with the words from the rapped portion of the song.
(Ulloa Aff. ¶ 2.) Mr. Barnes heard Ms. Ulloa singing this
Vocal Phrase"), and suggested that she sing the Vocal Phrase for
Mr. Carter. Mr. Carter liked the Vocal Phrase and asked Ms. Ulloa to
record the Vocal Phrase for possible inclusion in the Izzo song. (Hearing
Tr. at 89).
While she was at the recording studio, Ms. Ulloa did not discuss any
terms for the possible use of the Vocal Phrase; however, she later
discussed the possibility of receiving credit as a vocalist and appearing
on the music video with Mr. Barnes. (Hearing Tr. at 51-52, 55)*fn2. It
was not decided at the time that Ms. Ulloa recorded the Vocal Phrase
whether her recording would be included in the Izzo song. (Hearing Tr. at
Ms. Ulloa spoke to Mr. Barnes on several occasions after she recorded
the Vocal Phrase. Mr. Barnes assured Ms. Ulloa that she would receive
credit as a vocalist on the album if her recording was used, (Hearing Tr.
at 81), but on another occasion informed her that her recording might not
be used, and a more established performer might be asked to record the
Vocal Phrase. (Hearing Tr. at 11). After the recording session, Ms. Ulloa
continued to contact Mr. Barnes to negotiate terms for the use of her
recording. (Ulloa Aff. ¶ 6). When Mr. Barnes stopped returning Ms.
Ulloa's telephone calls, Ms. Ulloa contacted the American Federation of
Television and Radio Artists ("AFTRA") in
an attempt to establish communication with the Defendants. (Ulloa Dep. at
188). AFTRA is a national labor union that negotiates collective
bargaining agreements, provides benefits to its members, and' resolves
disputes between its members and their employers. See
www.aftra.com/whatis.html. Although Ms. Ulloa was not a member of AFTRA,
(Ulloa Aff. ¶ 7), and therefore presumed that AFTRA was not entitled
to collect payments on her behalf, (Ulloa Dep. at 237), an AFTRA employee
requested payment for Ms. Ulloa's work on the Izzo song from Defendants.
When her attempts to contact Defendants through AFTRA failed, Plaintiff
retained counsel. After receiving several communications from Plaintiff's
counsel regarding their alleged copyright infringement, (Pl. Exs. 5-6),
Defendants remitted payment to AFTRA for Plaintiff's work on the Izzo
song. Plaintiff's counsel returned these checks to AFTRA and filed this
Defendants seek summary judgment with respect to Plaintiff's copyright
infringement, joint authorship, Lanham Act and Unjust Enrichment claims.
Defendants also move to bifurcate the trial into liability and damages
phases. Plaintiff cross-moves for summary judgment with respect to
certain aspects of her copyright infringement claim. Defendants' motion
summary judgment is GRANTED with respect to Plaintiff's joint authorship
and Lanham Act claims. All other motions are DENIED.
A. Copyright Infringement
Plaintiff alleges the infringement of two separate copyrights: her
copyright in the sound recording of her performance of the Vocal Phrase
and her copyright in the musical composition of the Vocal Phrase.*fn3
(Compl. ¶ 1). "Copyright protection extends to two distinct aspects
of music: (1) the musical composition, which is itself usually composed
of two distinct aspects music and lyrics; and (2) the physical
embodiment of a particular performance of the musical composition,
usually in the form of a master recording." Staggers v. Real Authentic
Sound, 77 F. Supp.2d 57, 61 (D.D.C. 1999); see also 6 Melville B. Nimmer
& David Nimmer, Nimmer on Copyright § 30.03 (2003) ("Copyright
ownership of the physical embodiment of the performance of a musical
composition (e.g., a master recording) is distinct from the ownership of
the copyright in the musical composition itself").
Defendants claim that they are entitled to summary judgment on
Plaintiff's copyright infringement claim based upon three alternative
theories: (1) the melody of the Vocal Phrase is unoriginal and therefore
unprotectable as a matter of copyright
law, (2)"any copyright in the sound recording of the Vocal Phrase
belongs to Defendant Roc-A-Fella Records as the author of a work for
hire, and (3) Plaintiff licensed her interests in the composition and the
sound recording of the Vocal Phrase to Defendants. The Court is not
persuaded by any of these arguments.
In response, Plaintiff moves for partial summary judgment with respect
to "(1) copyright infringement of [Plaintiff's] voice and (2) copyright
originality of the subject melody." (Pl. Mem. at 1). Because there are
disputed issues of fact regarding the employment status of the Plaintiff
and the originality of the Vocal Phrase, Plaintiff's cross motion for
partial summary judgment is denied.*fn4
Originality i.e., "distinguishable variation" and the presence
of a "minimal element of creativity" is a prerequisite to
copyright protection. L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486,
490 (2d Cir. 1976) (internal quotations and citations omitted). The
Second Circuit has characterized
the test "of originality as "modest, minimal," and "a low threshold."
Durham Indust., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980)
(internal quotations and citations omitted). Here, Plaintiff created the
Vocal Phrase as a "counter-melody" to the Instrumental Phrase. (Hearing
Tr. at 4). Defendants argue that the Vocal Phrase is not entitled to
copyright protection because it is derived from the Instrumental Phrase
and contains no distinct protectable expression. (Def. Mem. at 8). That
the Vocal Phrase was derived from the Instrumental Phrase is no bar to
copyrightability, as derivative works are explicitly protected in the
Copyright Act. See 17 U.S.C. § 103. Just as courts in this district
have found that a harmony added to a preexisting melody is not unoriginal
as a matter of law, Tempo Music, Inc. v. Famous Music Corp.,
838 F. Supp. 162, 167-69 (S.D.N.Y. 1993), this Court declines to find
that a countermelody is unoriginal as a matter of law.*fn5
The parties have submitted reports of experts as well as musical and
written renditions of the specific tones in the Vocal and Instrumental
Phrases in support of their respective arguments regarding the
originality of the Vocal Phrase. It would be improper for this Court, on
a motion for summary judgment, to draw its own conclusions from this
evidence regarding the originality of the Vocal Phrase.*fn6 See Repp v.
Webber, 132 F.3d 882 (2d Cir. 1997). A reasonable factfinder, presented
with these materials, could find either the presence or absence of the
degree of originality required to confer copyrightability.
2. Work for Hire
The Copyright Act carves out an exception for "works made for hire."
17 U.S.C. § 201 (b). Generally, copyright ownership vests in the author
of a work; however, where a work is made for hire, the author's employer
is considered the author and owns
the copyright in the work, unless there is a written agreement to the
contrary. Community for Creative Non-violence v. Reid, 490 U.S. 730, 737
(1989). Defendants claim that the sound recording of the Vocal Phrase was
a work for hire, as Ms. Ulloa was an employee of the Defendants and the
Vocal Phrase was recorded within the scope of her employment.
In determining whether Ms. Ulloa was an employee of the Defendants when
she recorded the Vocal Phrase, this Court must look to the general common
law of agency, as well as the factors identified in Reid.*fn7 However,
A court must disregard those factors that, in light of
the facts of a particular case, are (1) irrelevant or
(2) of `indeterminate' weight that is, those
factors that are essentially in equipoise and thus do
not meaningfully cut in favor of either the conclusion
that the worker is an employee or the conclusion that
he or she is an independent contractor.
Eisenberg v. Advance Relocation & Storage, Inc., 237 F.3d 111, 114
(2d Cir. 2000).
The Second Circuit has identified five factors that "will almost always
be relevant and should be given more weight in the analysis, because they
will usually be highly probative of the true nature of the employment
relationship." Aymes v. Bonelli, 980 F.2d 857, 861 (2d Cir. 1992). These
factors are: (1) the hiring party's right to control the manner and means
of creation; (2) the skill required; (3) the provision of employee
benefits; (4) the tax treatment of the hired party; and (5) whether the
hiring party has the right to assign additional projects to the hired
party. Id. Questions of historical fact relevant to applying each of the
Reid-Aymes factors are for the finder of fact, but the ultimate
determination, on settled facts, of whether a work qualifies as a
work-for-hire is a question of law. Langman Fabrics v. Graff
Californiawear, 160 F.3d 106, 111 (2d Cir. 1998). Here, the Reid-Aymes
factors, when applied to the facts as alleged by Plaintiff, do not
support a finding that Ms. Ulloa was an employee of the Defendants as a
matter of law.
The first factor the hiring party's right to control the manner
and means of creation weighs against finding an employment
relationship. Plaintiff arrived at the studio as a guest. She developed
the Vocal Phrase herself without input
from Defendants and "used total discretion in creating her
melody as well as the length of the vocal phrase." (Pl's 56.1 Statement
¶ 14). The only direction Ms. Ulloa received from the Defendants was
an instruction that she was singing the lyrics in the wrong order.
(Hearing Tr. at 57-58). Defendants' factual contentions to the contrary
are irrelevant as they are the party moving for summary judgment.
The second factor the skill required to create the work
also weighs in Plaintiff's favor. Defendants argue that the
limited nature of Plaintiff's prior training and professional experience
suggests that she is not a "highly skilled" musician. (Def. Mem. at 15).
However, this argument mischaracterizes the skill factor. In evaluating
whether skill is required to create a work, the skill necessary to
perform the work not the relative inexperience of the individual
is relevant. Aymes, 980 F.2d at 862. Merely listening to the song
in question leads the Court to conclude that Ms. Ulloa possesses a talent
for singing that exceeds the ability of the average person.
Defendants do not claim to have provided Plaintiff with employee
benefits. Therefore, the third factor weighs against finding an
The fourth factor, the tax treatment of the hired party, forms the
focal point of Defendants' work for hire argument. It is not disputed
that the Plaintiff completed a W-4 form and
Defendants subsequently withheld taxes from paychecks that were
transmitted to the Plaintiff via AFTRA. However, assuming the Plaintiff's
version of events is correct, this form is not indicative of an
employment relationship. Once Plaintiff realized that her voice was
featured on the song, she sought to contact the Defendants through
AFTRA, whom she understood to be an organization that assists artists in
obtaining royalty payments. (Ulloa Dep. at 198). AFTRA told Plaintiff
that, before they would assist her in her attempt to contact the
Defendants, she had to complete a W-4 tax form. (Ulloa Dep. at 205,
222-23). Because Plaintiff was under the impression that she had to
complete the form in order to obtain assistance in her quest to contact
Defendants, the Court does not believe it is indicative of Plaintiff's
belief that she was an employee of Defendants.
Also, because the tax treatment of the Plaintiff largely occurred after
litigation was threatened, it provides little, if any, persuasive
evidence of the parties' contemporaneous belief of an employment
relationship*fn8 and, consequently, this factor is
assigned very little weight in the Reid-Aymes analysis. Moreover,
Defendants received at least two letters from Plaintiff's counsel,
advising them of their failure to acknowledge Ms. Ulloa's contribution to
the Izzo song and their infringement on her copyright, before Defendants
remitted any payment to AFTRA. (Pl. Exs. 5-6). Indeed, Defendants delayed
so long before remitting payment that they violated AFTRA's rules
regarding payments and were forced to pay a late penalty. (Archie Dep. at
104; Def. Ex. BB).
The fifth factor, whether the hiring party has the right to assign
additional projects to the hired party, also weighs against an employment
relationship. Ms. Ulloa was only present at the studio as a guest. Even
assuming Defendants "assigned" this project to her, they did not have the
right to "assign" other projects.
Having examined the Reid-Aymes factors and drawn all inferences in
favor of the Plaintiff, the Court cannot conclude as a matter of law that
either the musical composition or the sound recording of the Vocal Phrase
were created as works for hire.
A copyright owner who grants a license waives her right to sue the
licensee for copyright infringement. Graham v. James, 144 F.3d 229, 236
(2d Cir. 1998). Defendants argue that Plaintiff's conduct gave rise to an
implied license for Defendants to use the Vocal Phrase and the sound
recording in the Izzo song.
The Second Circuit has cautioned that an implied license will be found
"only in `narrow' circumstances where one party `created a work at the
[other's] request and handed it over, intending that [the other] copy and
distribute it.'" SmithKline Beecham Consumer Healthcare, L.P. v. Watson
Pharmaceuticals, Inc., 211 F.3d 21, 25 (2d Cir. 2000) (citing Effects
Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th Cir. 1990)). Here,
Plaintiff alleges that she created the Vocal Phrase "spontaneously"
rather than at Defendants' request.*fn9 (Ulloa Aff. ¶ 2). Also,
Plaintiff recorded the Vocal Phrase while a guest at the Defendants'
studio session; she did not create it elsewhere and then "hand it over"
Defendants bear the burden of proving the existence of a license.
Bourne v. Walt Disney Co., 68 F.3d 621, 631 (2d Cir.
1995). in order to establish an implied license, as for any implied
contract, they must prove that there was a meeting of the minds.*fn10
SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp.2d 301, 317
(S.D.N.Y. 2000). Here, it is clear that there was no meeting of the minds
with respect to the use of the Vocal Phrase. Ms. Ulloa had several
discussions with Mr. Barnes an apparent agent of Mr. Carter*fn11
with respect to whether her recording would be used in the Izzo
song and, if it was used, what sort of compensation and recognition she
would receive. Most significantly, there was no understanding that
recording would actually be used in the final version of the Izzo song.
The mere fact that Plaintiff left the physical recording in the
possession of the Defendants "cannot be considered an implicit acceptance
of any request for a license because no such request was outstanding."
Viacom Int'l, Inc. v. Fanzine Int'l, Inc., 2000 WL 1854903, at *4
(S.D.N.Y. July 12, 2000). Thus, this case is clearly distinguishable from
other situations where courts have typically found an implied license.
Those cases generally involve a previous agreement by the two parties
that the licensee use the licensor's work and a subsequent dispute
concerning either incomplete payment or an inability to agree on exact
written terms. Here, in contrast, there was no agreement that the
Defendants would use the Plaintiff's recording of the Vocal Phrase.
Defendants told Plaintiff that her recording might not even be used;
therefore there could be no "manifestation of mutual assent sufficiently
definite to assure that the parties are truly in agreement with respect
to all material terms." Express Indus. And Terminal Corp. v. New York
State Dep't of Transp., 715 N.E.2d 1050, 1053 (N.Y. 1999).
Even assuming that Plaintiff's conduct created an implied license,
Plaintiff clearly terminated any implied license prior to filing this
suit and is thus still entitled to damages for copyright infringement. "A
material breach of a covenant will
allow the licensor to rescind the license and hold the licensee liable
for infringement for uses of the work thereafter." Graham v. James,
144 F.3d 229, 237 (2d Cir. 1998). Rescission is permitted if the breach
is "material and willful, or, if not willful, so substantial and
fundamental as to strongly tend to defeat the object of the parties in
making the contract." Septembertide Pub., B.V. v. Stein & Day, Inc.,
884 F.2d 675, 678 (2d Cir. 1989) (citing Callanan v. Powers, 199 N.Y. 268,
284 (1910)). Although rescission is an extraordinary remedy, this Court
finds that the Plaintiff would be entitled to rescission because her
desire to receive public acknowledgement of her contribution to the Jay Z
song and thus publicize her career, ugo[es] to the root of the agreement
between the parties." Id. Thus, even assuming that Defendants did not
willfully intend to breach their agreement with Plaintiff, rescission is
still appropriate. See also Holtzbrinck Publ. Holdings, L.P. v. Vyne
Communs., 2000 WL 502860, at * 5 (S.D.N.Y. Apr. 26, 2000) (an implied
license is revocable absent consideration).
Plaintiff's attorney contacted Defendants on October 9, 2001, informed
them that their use of the Vocal Phrase infringed on Plaintiff's
copyright, and demanded that the Defendants "`immediately cease and
desist any manufacture, sale and use" of the Vocal Phrase. (Pl. Ex. 5).
Such notice would clearly
terminate any license, entitling Plaintiff to damages for Defendants' use
of the Vocal Phrase after that date.
B. Joint Authorship
In addition to her claims of copyright infringement, Plaintiff argues
that she is a joint author of the Izzo song.*fn12 Although, an original
contribution by a sound engineer, editor, or producer may result in a
joint ownership between the record producer and a performing artist in a
sound recording, see 1 Nimmer § 2.10 [A] , separate original
contributions are not sufficient to support a claim of joint authorship.
A "joint work" under the Copyright Act is one "prepared by two or more
authors with the intention that their contributions be merged into
inseparable or interdependent parts of a unitary whole."
17 U.S.C. § 101. In order to find joint authorship, the Court must
also find that the putative co-authors, at some time, shared an intent to
be co-authors. Childress v. Taylor, 945 F.2d 500, 509 (2d Cir. 1991).
Here, Plaintiff cannot
demonstrate that Mr. Carter (or the other Defendants) ever intended
to share authorship with Plaintiff.
Plaintiff argues that summary judgment is inappropriate on this issue
because "Jay Z recognized that Demme's melody would be merged with his
contributions into an inseparable whole" and that this fact could lead a
reasonable trier of fact to "conclude that Jay Z considers himself a
joint author." (Pl. Mem. at 32). However, this argument misapprehends the
requirement that the parties must intend to share the rights of
authorship rather than merely intend to enter into a relationship that
results in the creation of a copyrightable work.
[E]qual sharing of rights should be reserved for
relationships in which all participants fully intend
to be joint authors. The sharing of benefits in other
relationships involving assistance in the creation of
a copyrightable work can be more precisely calibrated
by the participants in their contract negotiations
regarding division of royalties or assignment of
shares of ownership of the copyright.
Childress, 945 F.2d at 509.
As Plaintiff has proffered no evidence to support an argument that Jay
Z ever intended to share authorship with the Plaintiff, Defendant's
motion for summary judgment on this issue is granted. Compare Thomson v.
Larson, 147 F.3d 195, 202 n.17 (2d Cir. 1998) (collecting cases that
found joint authorship
based upon objective indices of co-authorship intent). The Court also
dismisses Plaintiff's claim for an accounting in connection with
Defendants' exploitation of Izzo. See Lindsay v. Wrecked and Abandoned
Vessel R.M.S. TITANIC, 1999 WL 816163, at *7 (S.D.N.Y. Oct. 13, 1999)
("The duty to provide an accounting from profits obtained runs only
between co-owners of a copyright.").
C. Lanham Act
Defendants also seek summary judgment on Plaintiff's Lanham Act
violation, arguing that this claim "is entirely duplicative of her
infringement claim." (Def. Mem. at 20). This Court agrees and grants
Plaintiff brings her Lanham Act claim under § 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), which provides:
Any person who, on or in connection with any goods or
services, . . . uses in commerce . . . any false
designation of origin . . . which is likely to
cause confusion, or to cause mistake, or to deceive as
to the affiliation, connection, or association of such
person with another person, or as to the origin . . .
of his or her goods, services, or commercial
activities by another person . . . shall be liable in
a civil action . . .
To state a claim for damages under the Lanham Act, Plaintiff must
allege (1) a false representation of the source of her sound recording,
and (2) actual confusion by consumers as to the source. See Agee v.
Paramount Communications, Inc.,
59 F.3d 317; 327 (2d Cir. 1995) (citing PPX Enterprises, Inc. v.
Audiofidelity Enterprises, Inc., 818 F.2d 266
, 271 (2d Cir. 1987)).
Plaintiff's false representation allegation is based entirely on the fact
that Defendants made unauthorized use of her sound recording without
compensating her or recognizing her in the credits to the album. Such
allegations are insufficient to support a Lanham Act claim. Id. Where, as
here, a Plaintiff's claims under the Lanham Act "essentially track those
asserted under copyright law" and Plaintiff's "claim of false
originality" on the part of the defendants "does not venture beyond that
implicit in any allegedly false copyright," the Lanham Act claim will be
dismissed as duplicative of her copyright claim. Armstrong v. Virgin
Records, Ltd., 91 F. Supp.2d 628, 633 (S.D.N.Y. 2000). As Plaintiff does
not allege any "affirmative action of falsely claiming originality beyond
that implicit in any allegedly false copyright," Weber v. Geffen
Records, 63 F. Supp.2d 458, 464 (S.D.N.Y. 1999), her Lanham Act claim is
dismissed, and it is not necessary for the Court to address Plaintiff's
claims of consumer confusion.
D. Unjust Enrichment
Defendants move for summary judgment on Plaintiff's claim of unjust
enrichment on the grounds that it is preempted by the Copyright Act.
(Def. Mem. at 23-24). As Plaintiff has failed to respond to this motion,
the Court decides it unopposed.
As rioted above, factual disputes regarding the validity of Plaintiff's
copyright remain. If a jury finds that Plaintiff has no copyright in the
composition or sound recording of the Vocal Phrase or that she licensed
her copyrights to Defendants, then her claim of unjust enrichment is not
preempted by the Copyright Act. Therefore, the Court denies Defendants'
motion to dismiss this claim, construing Plaintiff's claim for unjust
enrichment as a claim that is made in the alternative to Plaintiff's
copyright infringement claim.
Defendants also seek to bifurcate the case and "require plaintiff to
establish defendants' liability prior to allowing plaintiff to inquire
into profits earned in connection with" the Izzo song. (Def. Mem. at
24). This motion is denied and the parties are directed to commence
damages discovery immediately.
For the reasons stated above, Plaintiff's claims for joint authorship
and false designation of origin under the Lanham Act are dismissed. The
parties are to complete all damages discovery no later than March 26,
2004. All motions in limine, proposed voir dire, and proposed jury
instructions are to be submitted no later than April 23, 2003. The
parties are directed to appear before the Court on May 3, 2004 at 2:00
p.m. for a final pre-trial conference. Trial will commence at 10:00 a.m.
on Tuesday, May 11, 2004.