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 ...