United States District Court, S.D. New York
June 22, 2005.
FREEPLAY MUSIC, INC., Plaintiff,
COX RADIO, INC., CUMULUS MEDIA, INC., ENTERCOM COMMUNICATIONS CORP., BEASLEY BROADCAST GROUP, INC., CITADEL BROADCASTING CORP., and VIACOM INC., Defendants.
The opinion of the court was delivered by: GERARD E. LYNCH, District Judge
OPINION AND ORDER
Freeplay Music, Inc. ("Freeplay"), the owner of copyrights in
certain musical compositions and sound recordings, brings this
action against defendants, corporate owners of radio stations (collectively, "Broadcasters"), alleging
violations of copyright and related claims. In a separate opinion
issued this day, the Court grants the motion to dismiss for lack
of personal jurisdiction by one defendant, Beasley Broadcast
Group, Inc. This opinion addresses a motion by all defendants to
dismiss for failure to state a claim. That motion will be granted
in part and denied in part.
The complaint in this case is a barebones document that
contains little factual information. Essentially, it simply
alleges that the defendant Broadcasters, "produced, exploited and
distributed in interstate commerce certain radio programming
containing certain of the Compositions and the Sound Recordings"
copyrighted by Freeplay. (Compl. ¶ 17.) On this basis, Freeplay
asserts two separate causes of action alleging that defendant
Broadcasters have infringed its copyrights, respectively in its
sound recordings and in its musical compositions.
While such a complaint may, in the abstract, satisfy the notice
pleading standards of the Federal Rules of Civil Procedure, the
briefing of defendants' motion to dismiss reveals that the
complaint in this case is not really a "short and plain statement
of the claim showing that the pleader is entitled to relief."
Fed.R.Civ.P. 8(a). Instead, the complaint is artfully worded
to avoid stating plaintiff's actual claim.
A naive reader of the complaint might naturally assume that
Freeplay is charging the Broadcasters with broadcasting
Freeplay's copyrighted sound recordings and compositions over the
radio as part of their regular programming. As the Broadcasters
point out in their motion, this would not state a viable claim.
(See D. Mem. 2-6.) Regarding sound recordings, the Copyright Act expressly excludes public performance rights of music from
protection. Section 114(a) states that "[t]he exclusive rights of
the owner of the copyright in a sound recording . . . do not
include any right of performance under Section 106(4)."
17 U.S.C. § 114(a). While the copyright holder has a right of performance
by means of a digital audio transmission, nonsubscription
broadcast transmissions, which traditionally includes radio
broadcasts, are not included in this right. 17 U.S.C. § 114(d).
See Bonneville Int'l Corp. v. Peters, 347 F.3d 485, 488 (3d
Cir. 2003) ("The paradigmmatic `nonsubscription broadcast
transmission' was a traditional over-the-air radio broadcast.").
A copyright in the underlying musical compositions does
provide a performance right, but the Broadcasters assert that
they have licensed the right to perform plaintiff's compositions
over the radio from its agent, Broadcast Music Inc. ("BMI").
(See D. Mem. 6.) In opposing the motion, plaintiff huffs a bit
that the Broadcasters have improperly asked the Court to
consider, on a motion to dismiss, factual material (i.e., the
BMI licenses) outside the four corners of the complaint. In fact,
however, Freeplay does not dispute that these licenses exist.
Instead, Freeplay's primary response to the motion is that the
complaint intends to charge a quite different violation, which it
contends would not be covered by the licenses. Freeplay asserts
that "[d]efendants are fully aware . . . [from] correspondence
between the parties" (P. Mem. 3) (although the Court would have
no way of gleaning from Freeplay's complaint) that the real
dispute between the parties involves a different legal theory
According to Freeplay, the complaint really means to allege
that the Broadcasters have violated its "synchronization rights."
(Id.) By alleging, in the language quoted above, that the
Broadcasters had "produced . . . programming containing"
plaintiff's compositions, Freeplay apparently means to complain of "defendants' illegal
synchronization of plaintiff's musical works with other works."
(Id. at 4, quoting Compl. ¶ 17; emphasis in original.)
As the Second Circuit has described it, "the so-called
synchronization right, or `synch' right [is] the right to
reproduce the music onto the soundtrack of a film or a videotape
in synchronization with the action. The `synch' right is a form
of the reproduction right also created by statute as one of the
exclusive rights enjoyed by the copyright owner." Buffalo
Broadcasting Co., Inc. v. Am. Soc'y of Composers, Authors &
Publishers, 744 F.2d 917, 920 (2d Cir. 1984). The Court went on
to note, "When [a] producer wishes to use outside music in a film
or videotape program, it must obtain from the copyright
proprietor the `synch' right in order to record the music on the
soundtrack of the film or tape." Id. at 921. Such a license is
necessary because "incorporating a copyrighted sound recording
into the soundtrack of a taped commercial television production
infringes the copyright owner's exclusive right of reproduction."
Agee v. Paramount Communications, Inc., 59 F.3d 317, 319 (2d
Cir. 1995).*fn1 The Court of Appeals also explained in Agee, however, that while a producer of television
programs violated a copyright owner's rights by using his sound
recordings to make an audio track for a segment of a television
program, the television stations that broadcast the producer's
infringing works were not liable in copyright. Id. at 326-27.
Since Agee did not hold copyrights in the underlying musical
compositions, id. at 319, the Court had no occasion to address
the liability of the broadcasters to the holder of such
As reformulated in its brief, Freeplay claims that "the
wrongdoing at issue in this case relates to defendants' illegal
synchronization of plaintiff's musical works with other works in
violation of plaintiff's copyrights." (P. Mem. 3.) Even the
reformulated allegation is strikingly vague, and leaves
considerable doubt about what the defendants are actually accused
of doing. In their reply brief, the Broadcasters argue that
Freeplay "has alleged only that Defendants broadcast `radio
programming containing' its sound recordings and musical
compositions." (D. Reply 2; emphasis in original.) Based on this
premise, the Broadcasters then rely on Agee for the proposition
that they cannot be held liable for merely broadcasting
infringing synchronized material. (Id. at 3.) Nevertheless, the
Broadcaster's argument conveniently overlooks the claim in
Freeplay's brief that defendants themselves "synchroniz[ed] . . .
plaintiff's musical works with other works" (P. Mem. 3), and,
more importantly, the allegation in the complaint that defendants
"produced . . . radio programming containing" the copyrighted
works. (Compl. ¶ 17; emphasis added.) Divorced from the
synchronization issue, this language might naturally be read as
suggesting that the Broadcasters produced radio shows
("programming") on which the plaintiff's recordings were played.
Once the synchronization issue is highlighted, though, the same language can easily be read as alleging that the Broadcasters
themselves created commercials or jingles that synchronized the
plaintiff's material with other works.
Freeplay's brief is of little help in deciphering its
allegations. Freeplay asserts that its compositions are
instrumental music "typically synchronized with other sounds such
as a vocal track to create promotions, programming or
commercials." (P. Mem. 5-6.) Freeplay thus contends that the
Broadcasters' BMI licenses do not cover "compositions of the
musical works comprising the illegally synchronized commercials
played by defendants' radio stations," since the commercials are
different (infringing) works from those covered by the licenses.
(Id. at 6.) The Broadcasters reply that Freeplay's argument is
unpersuasive because Freeplay has not alleged in its complaint
that the materials broadcast are different from those licensed.
While the complaint leaves much to the imagination, it cannot
be dismissed at this stage. A complaint may not be dismissed
pursuant to Rule 12(b)(6) "unless it appears beyond a doubt that
plaintiff can prove no set of facts that support his claim which
would entitle him to relief." Haverstraw v. Columbia Elec.
Corp., 237 F. Supp. 2d 452, 454 (2d Cir. 2002). At a minimum,
Freeplay's complaint can be construed as asserting that the
Broadcasters did not merely broadcast programming supplied by an
outside producer that violated its synchronization rights, but
actually produced infringing materials themselves, an accusation
that would state a claim for violation of copyright under Agee.
After discovery, on a full factual record, it will be easier to
determine whether any actions of the Broadcasters in fact
transgressed plaintiff's rights. For now, it is sufficient that
Freeplay's complaint adequately alleges that the Broadcasters
have violated its copyrights. II. Other Claims
Freeplay's other claims fare less well. Freeplay asserts causes
of action for unfair competition under the Lanham Act and under
New York state law, as well as for common law unjust enrichment.
None of these claims can survive a motion to dismiss.
The federal unfair competition claim is predicated on false
designation of origin (Compl. ¶¶ 30-34), and plaintiff
acknowledges that its claims under New York law are "virtually
the same." (P. Mem. 9.) However, the Supreme Court has held that
the Lanham Act protects only "the producer of . . . tangible
goods that are offered for sale, and not . . . the author of any
idea, concept, or communication embodied in those goods." Dastar
Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37
(2003). The right to copy creative works, with or without
attribution, is the domain of copyright, not of trademark or
unfair competition. Id. at 33. The failure to credit the true
author of a copyrighted work is not a false designation of
origin, but a violation of copyright. Carroll v. Kahn, No.
03-CV-0656, 2003 WL 22327299, at *5 (N.D.N.Y. Oct. 9, 2003). See
also Smith v. New Line Cinema, 03 Civ. 5274 (DC), 2004 WL
2049232, at *10-*11 (S.D.N.Y. Sept. 13, 2004) (holding that
failure to credit author of screenplay not actionable under the
Lanham Act); Boston Int'l Music, Inc. v. Austin, Civ. A.
02-12148-GAO, 2003 WL 22119228, at *2 (D. Mass. Sept. 12, 2003)
(unauthorized reproduction and performance of music and sound
recordings did not state a claim under the Lanham Act "because
the plaintiffs' claims were sufficiently covered by the law of
Freeplay argues that a Lanham Act unfair competition claim "can
exist in addition to copyright infringement claims as long as the
non-copyright claims allege certain wrongdoing beyond the
wrongdoings related to copyright infringement." (P. Mem. 8.) In
this case, however, Freeplay alleges no such additional or separate wrongdoing. To
the extent that the complaint alleges anything resembling a fact
at all, Freeplay's unfair competition claims are based on the
very acts of producing and broadcasting allegedly infringing
works that form the factual underpinning of its copyright claims.
Therefore, Freeplay's Lanham Act claims fail as a matter of law.
The same principle dooms Freeplay's state law claims, whether
of unfair competition or of unjust enrichment. "[S]tate law
claims that are substantively redundant of Copyright Act claims
are preempted. . . . A state law claim with an `extra element'
beyond mere reproduction, preparation of derivative works,
distribution, performance or display, that changes the nature of
the action so that it is qualitatively different from a
copyright infringement claim, survives preemption." Sharp v.
Patterson, No. 03 Civ. 8772 (GEL), 2004 WL 2480426, *1 (S.D.N.Y.
Nov. 3, 2004), quoting Logicom Inclusive, Inc. v. W.P. Stewart &
Co., No. 04 Civ. 0604 (CSH), 2004 WL 1781009, at *16 (S.D.N.Y.
Aug. 10, 2004) (internal quotation marks omitted). Because
Freeplay has failed to allege any "extra element" beyond simply
the same charge that the defendants "produced, exploited and
distributed in interstate commerce certain radio programming
containing certain of [plaintiff's copyrighted] Compositions and
. . . Sound Recordings" (Compl. ¶ 17) that forms the basis of its
copyright claims, its state law causes of action are pre-empted
by the Copyright Act and must be dismissed.
For the reasons set forth above, defendants' motion to dismiss
the complaint for failure to state a claim is granted with
respect to the third, fourth and fifth claims for unfair
competition in violation of the Lanham Act, common law unfair
competition, and unjust enrichment (and the sixth claim, for injunctive relief, insofar as it is predicated
on those claims), and denied with respect to the first and second
causes of action for copyright infringement (and the sixth claim,
to the extent it is predicated on the copyright claims).