United States District Court, S.D. New York
November 22, 2005.
SHARICE DAVIS Plaintiff,
MARY J. BLIGE, BRUCE MILLER, RONALD LAWRENCE, KWAME HOLLAND, DANA STINSON, AUSAR MUSIC, MARY J. BLIGE PUBLISHING, BRUCE MILLER PUBLISHING, KWAME HOLLAND PUBLISHING, MARY J. BLIGE MUSIC, DAYNA S. DAY PUBLISHING CO., WARNER-TAMERLANE PUBLISHING CO., UNIVERSAL MUSIC GROUP, INC., UNIVERSAL STUDIOS, INC., UNIVERSAL MUSIC PUBLISHING GROUP, UNIVERSAL-MCA MUSIC PUBLISHING, UNIVERSAL MUSIC & VIDEO DISTRIBUTION, CORP., and MCA RECORDS, INC., Defendants.
The opinion of the court was delivered by: CHARLES HAIGHT Jr., District Judge
MEMORANDUM, OPINION AND ORDER
This is an action asserting copyright claims under the
Copyright Act, 17 U.S.C. §§ 101 et. seq., a claim for declaratory
judgment under 28 U.S.C. § 2201, and state law claims for unfair
competition, unjust enrichment, and for consumer protection
claims under the New York General Business Law §§ 349 and
350.*fn1 Defendants move for summary judgment as to all of
The dispute in the instant action centers upon the release in
2001 of an album entitled "No More Drama" (hereinafter, the
"Album"), performed by the defendant songwriter and recording
artist Mary J. Blige. J. Davis Decl., Ex. A ¶ 25. Since its
release, the Album has achieved triple platinum status. Page
Decl., Ex. I. Plaintiff Sharice Davis alleges that two of the
songs contained on the Album, "LOVE" and "Keep it Moving"
(hereinafter referred to collectively or individually as the
"Album Composition(s)"), infringe her copyright in two works of
original authorship, "L.O.V.E." and "Don't Trade in My Love"
(hereinafter referred to collectively or individually as the
"Disputed Composition(s)"). Page Decl., Exhs. F & G.
Specifically, Davis claims that the Album Composition "LOVE" is
virtually identical to the Disputed Composition "L.O.V.E.,", and
the Album Composition "Keep it Moving" bears substantial
similarity to the Disputed Composition "Don't Trade in My Love."
Id. The labels and packaging of the Album identify Blige, her
brother Bruce Miller, Dana Stinson, Ronald Lawrence, and Kwame
Holland as co-writers of the Album Compositions.*fn2
Complaint ¶¶ 62-63. Each of these defendants, along with their
respective music publishing companies, also named as defendants,
join the present motion for summary judgment as Moving
Defendants.*fn3 The circumstances surrounding the creation of the Disputed
Compositions are at issue. In deposition testimony, Davis
conceded that the Disputed Compositions were co-authored by
non-party Bruce Chambliss, defendant Miller's father. Page Decl.,
Ex. B at 22, 152, 156-62, 165, 172-3, 175-6, 278, 305. Davis
registered the Disputed Compositions with the United States
Copyright Office on two occasions, listing Chambliss as a
co-author (one set bearing the date August 2, 2002, the other
undated). J. Davis Decl., Exhs. B & C. In deposition testimony,
Miller likewise asserts that Chambliss is the author of Disputed
Composition "L.O.V.E." Page Decl., Ex. E at 226. Miller also
presents two written agreements (hereinafter, the "Written
Agreement(s)"), in which Chambliss assigns his rights in each of
the Disputed Compositions to Miller. Chambliss Decl., Exhs. A &
B. The Written Agreements are dated June 23, 2004, one day prior
to Chambliss' deposition. The Written Agreements each provide
that "[Bruce Chambliss] does hereby sell, assign, transfer and
set over unto Bruce Miller d/b/a CWAB Music (SESAC), its
successors and assigns, an undivided one hundred percent (100%)
share in and to all of [Bruce Chambliss's] right, title and
interest in the [Disputed Composition] of the universe-wide
copyrights in and to the musical composition . . . IN WITNESS
WHEREOF, [Bruce Chambliss] has duly executed this instrument of
transfer as of the date I first create [sic] the above-referenced
Composition . . ." Id. According to Defendants, the Written
Agreements served to memorialize a prior oral transfer by
Chambliss of all his musical compositions to Miller. J. Davis
Decl., Exhs. E & F (Miller Tr. at 98-99, 106; Chambliss Tr. at
37-8, 114, 157, 166). Davis hotly contests the existence of any
oral transfer. Plaintiff's Memorandum of Law in Opposition to
Defendants' Motion for Summary Judgment at 4-8, 14-15. The
alleged oral transfer first came to light during the Miller deposition on December 9, 2003. Page Decl., Ex. E at
Davis' Complaint alleges six claims. Davis' First Claim, for
copyright infringement, asserts that Defendants engaged in
unauthorized copying, distribution, sale and performance of
Davis' copyrighted works and that such infringement was
intentional, willful and with full knowledge of Davis'
copyrights. She seeks both monetary damages and injunctive relief
restraining Defendants and their agents from reproducing,
distributing, or selling the Album or the Disputed Compositions.
Davis' Second Claim is a prayer for declaratory relief,
requesting that the Court issue a declaration that Davis is owner
of Album Composition "LOVE" and one-half owner of an undivided
interest in Album Composition "Keep it Moving,' and as such is
entitled to one hundred percent of the royalties generated in
connection with Album Composition "LOVE," and fifty percent of
all royalties generated in connection with Album Composition
"Keep it Moving."
Davis' Third Claim for violation of Lanham Act § 43(a), asserts
that Defendants falsely designated the origin of their goods in
interstate commerce by falsely identifying and misrepresenting
the authors of the Album Compositions. Davis seeks injunctive
relief and damages.
Davis' Fourth Claim, for unfair competition, asserts that
Defendants knowingly and willfully confuse the public "by
creating the false and misleading impression that the [Disputed
Compositions] were authored by persons other than Davis."
Complaint ¶ 99.
Davis' Fifth Claim alleges unjust enrichment against defendants
Blige and Miller.
Davis' Sixth Claim asserts violations under the New York
General Business Law, claiming that defendants' acts were
intentionally designed to mislead the public by creating the false impression that Disputed Compositions were authored by
persons other than Davis, conduct which constitutes deceptive
acts and practices in the conduct of trade and commerce and false
advertising in violation of §§ 349 and 350 of the New York
General Business Law.
Defendants move for summary judgment as to the copyright
infringement claim on the basis of the Written Agreements.
Defendants contend that these agreements reflect an assignment of
Chambliss' copyright interests to Miller, who, thereby possessing
the rights of a co-author, cannot infringe the copyright as a
matter of law.
Davis resists the motion as to all aspects, with an exception
as to her Third Claim for relief under the Lanham Act. Davis did
not reply to Defendants' motion for summary judgment as to this
For the reasons that follow, I grant defendants' Motion for
Summary Judgment as to all Davis' claims.
A. Standard of Review on Motion for Summary Judgment Pursuant
to Rule 56
Rule 56 of the Federal Rules of Civil Procedure provides that a
court shall grant a motion for summary judgment "if the pleading,
depositions, answers to interrogatories, and admissions on file,
together with the affidavits, if any, show that there is no
genuine issue of material fact and that the moving party is
entitled to a judgment as a matter of law." Fed.R.Civ.P.
56(c); see also Celotex Corp. v. Cattrett, 477 U.S. 317 (1986).
"The party seeking summary judgment bears the burden of
establishing that no genuine issue of material fact exists and
that the undisputed facts establish her right to judgment as a matter of law."
Rodriguez v. City of New York, 72 F.3d 1051, 1060-61 (2d Cir.
1995). The substantive law governing the case will identify those
facts which are material and "only disputes over facts that might
affect the outcome of the suit under governing law will properly
preclude the entry of summary judgment." Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986).
In determining whether a genuine issue of material fact exists,
a court must resolve all ambiguities and draw all reasonable
inferences against the moving party. Matsushita Elec. Indus. Co.
v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). If there is
"any evidence in the record from any source from which a
reasonable inference could be drawn in favor of the non-moving
party," then summary judgment should be denied. Chambers v. TRM
Copy Centers Corp., 43 F.3d 29, 37 (2d Cir. 1994).
B. Copyright Infringement
The defendants' motion rests upon Chambliss' alleged transfer
to Miller of his rights in the Disputed Compositions. The
defendants contend that Chambliss orally transferred these rights
sometime between late 1998 and early 1999, and that this oral
transfer was ratified by the Written Agreements between Chambliss
and Miller, signed on June 23, 2004. The Copyright Act requires
that transfers of copyright ownership be made in writing.
17 U.S.C. § 204(a). The writing requirement may be satisfied,
however, by the copyright owner's subsequent execution of a
writing confirming the earlier oral agreement. Eden Toys, Inc.
v. Florelee Undergarment Co., Inc., No. 80 CIV. 2242, 1984 WL
2120, at *2 (S.D.N.Y. Jan. 31, 1984); Dan-Dee Imps., Inc. v.
Well-Made Toy Mfg. Co., 524 F.Supp. 615, 618 (E.D.N.Y.); Melvin
Nimmer & David Nimmer 1 Nimmer on Copyright § 6.10 (2005) (hereinafter "Nimmer"). The
first question, then, is whether or not an oral agreement did in
fact exist between Chambliss and Miller.
A number of inconsistencies are apparent in the testimony
describing the alleged oral transfer and subsequent written
confirmation. Most significant of these is Chambliss' testimony
as to the timing of the alleged oral transfer. Chambliss claims
he was motivated to sign over his rights in all of his musical
works to his son because he knew he would be going to prison.
Chambliss was incarcerated for six and a half months prior to or
in 1997 and again from March 2001 until the spring of 2003. Page
Decl., Ex. L at 6-7, 15-16, 39. The earlier incarceration took
place before the creation of the Disputed Compositions, whereas
the later sentence was served after the song "L.O.V.E." had
already been used by Miller. Page Decl., Ex. E at 95. Thus
Chambliss' recollection appears to be in error. Chambliss' timing
is not only internally inconsistent, it is also contradicted by
the testimony of Miller, who dates the transfer to either late
1998 or early 1999. Id. at 98. Neither Chambliss nor Miller
provides any further details or specific terms of the oral
transfer. They both testify simply that Chambliss orally
transferred all the songs he had ever written to Miller.
Furthermore, the existence of the alleged oral agreement was
unknown to any of the other parties involved in this lawsuit
until Miller's deposition on December 9, 2003. In Chambliss'
deposition testimony, which both confirms the oral transfer and
makes reference to a written agreement memorializing that
transfer, Chambliss was unable to recall the day, or even the
month, in which he executed the written agreement, despite the
fact that the written agreement is dated June 23, 2004, the day
before the Chambliss deposition was taken. Page Decl., Ex. L at
114, Page Decl., Ex. O. Nor was he able to recall which songs
were listed in the written agreement, or whether these songs had already been used or would
be used sometime in the future. Page Decl., Ex. L at 115-116.
Finally, Davis maintains that Chambliss told her, in the presence
of a witness, Catherine Ottaviani, that she could have all the
songs they had co-written, that those songs were hers to keep and
to do with them as she wished. Page Decl., Ex. E at 184. Taken
together, these inconsistencies amount to a factual issue that
must be resolved by a finder of fact. In resolving all
ambiguities and drawing all inferences against Defendants, as the
movants, I conclude that a reasonable jury could find an oral
agreement never existed between Chambliss and Miller.
Since a genuine issue exists as to whether Chambliss ever
orally transferred his rights in the Prior Compositions to
Miller, the Court need not consider whether the Written
Agreements are sufficient to satisfy the writing requirement as a
written ratification of a prior oral transfer.
Defendants contend, however, that even if there was no prior
oral transfer, thus making the June 23, 2004 agreements the first
transfer by Chambliss to Miller, the written agreements would
nonetheless be valid to defeat Davis' claims. I agree. Defendants
argue that, as a co-owner of the copyright in the Disputed
Compositions, Chambliss may grant a retroactive license to the
works that cures past infringement. The Written Agreements,
defendants claim, serve to retroactively transfer the Disputed
Compositions to Miller. Defendants argue that, having effected
authorization from one joint copyright owner, they are immunized
from any copyright infringement action brought by the other joint
Despite the factual questions that abound as to any prior oral
agreement between Chambliss and Miller, there exists no genuine
issue as to the intent of co-author Chambliss to transfer his
rights to Miller, nor his realization of this intent in the
Written Agreements of June 23, 2004. Lower court opinions on this question, including those
of this court, are generally in agreement. Where there is no
dispute between transferor and transferee of a copyright as to
the validity of the transfer, such a transfer has been
consistently upheld. This is the case even where the license or
transfer takes place after the institution of an action for
copyright infringement, and indeed, even where the plaintiff in
the action is the other co-owner of the copyright and the
retroactive license or transfer by one co-owner serves to bar the
infringement claim of the other co-owner. See Country Road v.
MP3. COM, Inc. 279 F.Supp.2d 325 (S.D.N.Y. 2003) (settlement
agreement between defendants and co-owner granting defendant
retroactive reproduction rights barred any infringement claim by
remaining co-owners and cured any past infringement);
Copyright.net Music Publishing LLC v. MP3.COM, 2003 WL 740757
(S.D.N.Y. March 4, 2003) (same); Silverstein v. Fox
Entertainment Group, Inc., 2004 WL 1620895 (S.D.N.Y. July 19,
2004) (retroactive license, obtained after alleged infringement
occurred and after institution of legal action, immunized
defendant from infringement); Lone Wolf McQuade Assocs. v. CBS
Inc., 961 F. Supp. 587, 597 (S.D.N.Y.) (retroactive license
cures past infringement); Tuff-N-Rumble Mgmt., Inc., 2000 WL
1808486 (E.D. La. Dec. 8, 2000) (co-owner's grant of retroactive
license to co-defendant during litigation barred plaintiff's
In Silverstein v. Fox Entertainment, a publicist commissioned
an artist to create an animated character, for use in a variety
of campaigns. Shortly thereafter, as the publicist began to
promote the animated character, she discovered that Twentieth
Century Fox was producing a similar character for use in an
animated feature film. The publicist initiated suit against Fox,
seeking to enjoin the film company from distributing or
displaying any products featuring the animated character. In the
course of the litigation, it came to light that the animated
character was copied entirely from a copyrighted beaver created by a clip art
company, which in turn had hired an artist to draw the character
for the company. The artist and the clip art company each owned
an undivided one-half interest in the animated character. The
publicist purchased the artist's rights in and to the animated
character retroactive to the date of creation. In order to avoid
liability to the publicist, Fox subsequently entered into an
agreement with the clip-art company for a non-exclusive license,
retroactive to the creation of the animated character. The
publicist attempted to maintain her suit against Fox. The court
found, however, that both plaintiff and defendant had a right to
use the animated character, through the retroactive transfer and
retroactive license respectively. Judge Holwell's opinion
There can be no copyright infringement action by a
holder of a copyright against a licensee of another
holder of the same copyright. The retroactivity of
the licensing agreement between [the clip art
company] and Fox has no necessary effect on its power
to immunize Fox against claims of infringement of the
Beaver copyright. A retroactive license can cure
2004 WL 1620895, at *9 (citations and internal quotation marks
omitted) (emphasis added). A fortiori, the same result obtains
in the case of a retroactive complete and total assignment, which
is the situation presented by the case at bar, even if one
assumes that there was no prior oral agreement between Chambliss
The reason for this seemingly draconian outcome is that a
co-owner has a legal right to grant a license in a work without
another co-owner's permission or to transfer his rights in the
copyright freely. See 1 Nimmer § 6.11. Absent an agreement to
the contrary, one joint owner may always transfer his interest in
the work to a third party, including the grant of non-exclusive
licenses. Only an exclusive license requires the consent of any
other joint owners, because such a license would have the effect of transferring the other joint owners' interest
to a third party. Id. A joint author is entitled only to an
accounting of his share of the profits for the other joint
author's use of the joint work. See Thompson v. Larson,
147 F.3d 195, 199 (2d Cir. 1998). "[A]n action for infringement
between joint owners will not lie because an individual cannot
infringe his own copyright." Weissman v. Freemen,
868 F.2d 1313, 1318 (2d Cir. 1989).
In the case at bar, Davis' status as joint owner with
Chambliss, who in turn transferred his interests to Miller, bars
her from stating a claim for copyright infringement against
Miller, or any of the other defendants, his licensees. See
Weissman, 868 F.2d at 1318; McKay v. Columbia Broad Sys.,
Inc., 324 F.2d 762, 763 (2d Cir. 1963) ("a license from a
co-holder of a copyright immunizes the licensee from liability to
the other co-holder for copyright infringement") (internal
Davis relies on only two copyright cases, in urging the Court
to rule against a retroactive transfer. One of these, in this
district, David v. Showtime/The Movie Channel, Inc.,
697 F.Supp. 752 (S.D.N.Y. 1988), is inapposite. That case involved a
retroactive application to plaintiffs for a license, as
prescribed by a longstanding consent decree between plaintiffs
and the Department of Justice. Defendants' license had expired
several years earlier, however both parties entered into lengthy
negotiations intending to renew their licensing agreements. Id.
at 744. When the parties could not agree on a new licensing rate,
defendants made a written application to plaintiffs to become
licensed again, intending this license to be retroactive to the
date of the last license's expiry. Id. at 755. The court
refused to construe defendants' application for a retroactive
license as a bar to plaintiff's claim for copyright infringement
over the intervening years between expiration of the first
license and the later application for a renewal. Id. at 764.
The only other opinion cited by Davis involving copyright
infringement claims, Leicester v. Warner Bros., 1998 WL
34016724 (C.D. Cal. May 29, 1998), was decided principally on the ground that the defendant possessed a
non-exclusive license, and therefore did not have a right to
sub-license others. Leicester v. Warner Bros., 1998 WL
34016724, at *5.*fn4
Perhaps recognizing this state of the law and its consequences
for her case, Davis urges the Court to invalidate the Written
Agreements on the basis that the agreements are unsupported by
consideration. Plaintiff's Memorandum of Law in Opposition to
Defendants' Motion for Summary Judgment at 19. This argument has
little merit. Davis has no standing to contest the Agreements'
validity. cf. Co. of Tioga v. Solid Waste Indus., Inc.,
178 A.D.2d 873, 577 N.Y.S.2d 922 (3d Dep't 1991) ("We initially
reject [the] argument that as a judgment creditor [of
co-defendant] it has standing to raise the affirmative defense of
lack of consideration in the foreclosure action because it is a
necessary party to the action. This affirmative defense is
personal to the parties to the contract, and . . . a stranger to
the mortgage and the underlying contract, may not assert it").
Furthermore, "parties to a contract are free to make their
bargain, even if the consideration exchanged is grossly unequal
or of dubious value." Minuteman Press Int'l, Inc. v. Matthews,
232 F.Supp.2d 11, 16 (E.D.N.Y. 2002), quoting Apfel v.
Prudential-Bache Secs., Inc., 81 N.Y.S.2d 470, 475,
600 N.Y.S.2d 433, 435 (1993); Granite Partners, L.P. v. Bear, Stearns & Co.
Inc., 58 F.Supp.2d 228, 252 (S.D.N.Y. 1999).*fn5 Davis is unable to provide factual evidence to contradict
Chambliss' written agreement, verified in his deposition
testimony, as to his intent and transfer of his right in the
Disputed Compositions to Miller. As a matter of law, Davis'
copyright infringement claim is barred.
C. Declaratory Judgment Claim
Since Davis has no claim for copyright infringement against
defendants, her claim for declaratory judgment must also be
denied. Davis' status as joint owner not only bars her from
stating a claim for copyright infringement, it also precludes a
declaration that Davis has any ownership interest in the Album
Compositions. A non-participating co-owner acquires no property
rights in a newly created derivative work. See Weissmann v.
Freeman, 868 F.2d 1313, 1318 (2d Cir. 1989); Maurizio v.
Goldsmith, 84 F.Supp.2d 455, 467 (S.D.N.Y. 2000). Since Miller
is a co-owner of the Disputed Compositions, he is authorized to
incorporate them into derivative works. Davis cannot obtain a
property interest in the derivative works solely on the basis of
her co-ownership of the Disputed Compositions.
D. State Law Claims
Plaintiff's remaining claims are asserted under state law.
Where, as here, all federal law claims are dismissed before
trial, "the balance of factors to be considered under the pendent
jurisdiction doctrine judicial economy, convenience, fairness,
and comity will point toward declining to exercise jurisdiction
over the remaining state-law claims." See Silverstein, 2004 WL
1620895, at *9 (citing Carnegie-Mellon Univ. v. Cohill,
484 U.S. 343, 350 n. 7 (1988)). I therefore decline to exercise
jurisdiction over the remaining state law claims. III. CONCLUSION
For the foregoing reasons, the first, second and third claims
alleged in the complaint are dismissed with prejudice. Because
the Court declines to assert subject matter jurisdiction over the
fourth, fifth and sixth claims, they are dismissed without
It is SO ORDERED.
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