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Tolliver v. McCants

March 25, 2009


The opinion of the court was delivered by: John F. Keenan, United States District Judge

Opinion & Order


In 1982, plaintiff Orrin Lynn Tolliver, Jr., collaborated with defendant James Louis McCants to produce a music album that included a recording of a musical composition entitled, "I Need a Freak." In 2005, McCants licensed the composition to the popular music group, The Black Eyed Peas, for use in their hit single, "My Humps." At issue in this case is whether the grant of the license by McCants infringed upon Tolliver's copyright to the composition.

The parties now cross-move for summary judgment. For the reasons below, plaintiff's motion is granted, and defendant's motion is denied.


The facts set forth herein are undisputed except where noted.

I. The Parties

In the early 1980s, Tolliver was a disc jockey and a program director at a radio station in Cleveland, Ohio. (Tolliver Decl. ¶ 12.) He hosted a rhythm and blues music program called the "Lynn Tolliver Show," which aired in Cleveland until 2000. (Id.) Besides being a radio personality, Tolliver has written columns for music industry magazines, promoted records, and authored about fifty musical compositions.

(Id. ¶¶ 11, 15, 17.) He also started a company called David Payton Music in the 1970s to manage and promote up-and-coming bands and musicians. (Id. ¶ 20.)

Around this time, McCants was an independent record promoter and a friend of Tolliver's. (McCants Dep. Tr. at 63-65, 173). Together with several of his brothers, McCants owned and operated a music studio in Cleveland called Heat Records, where he and his brothers wrote and recorded music. (Id. at 67.) He also owned a publishing company called Jimi Mac Music.

II. The Composition and Recording of "I Need a Freak"

Tolliver did not have much success either as a songwriter or a band manager, except for one project involving a hip-hop group called Sexual Harassment. (Tolliver Decl. ¶¶ 17, 20.) Tolliver formed Sexual Harassment as a "concept band." (Id. ¶ 30.) Its members were selected primarily based on appearance and choreographic skill rather than musical ability. (Id.) According to Tolliver's vision, the band members would perform at live shows, but most of their music would be produced and recorded for them by others. (Id. ¶¶ 31, 36.)

Tolliver wanted the group's debut album to focus on a central theme of sexuality and its effects on relationships and love. (Tolliver Decl. ¶ 37.) Tolliver wrote basic lyrics to all of the musical compositions for the album, including a composition entitled "I Need A Freak" (the "Composition").

(McCants Dep. Tr. at 140.) Tolliver's inspiration for the Composition was a woman named Lourdes who later became his wife. (Tolliver Decl. ¶¶ 21-23.)

Sometime in 1982, Tolliver approached McCants and asked to use Heat Records to record the Sexual Harassment album, and McCants agreed. (Tolliver Dep. Tr. at 75.) Tolliver worked with two or three of McCants's brothers to create music for the Composition. (Id. at 96-97; McCants Dep. Tr. at 140.) McCants admits that he did not write any portion of the Composition's lyrics or music. (McCants Dep. Tr. at 153, 170; McCants Response Memo at 25.) All of the compositions were then produced and recorded in the studio.

The completed album was titled "I Need A Freak" (the "Album"). It contained recorded performances of six musical compositions, or "tracks." The first track is a recorded performance of the Composition (the "Sound Recording"). Many of the lyrics on the Sound Recording and the other tracks were sung by Tolliver.

It is important to distinguish the Sound Recording from the Composition. "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 [sound] recording." See Ulloa v. Universal Music and Video Distrib. Corp., 303 F. Supp. 2d 409, 412 (S.D.N.Y. 2004) (internal quotation marks omitted). It is undisputed that McCants owns the copyright to the Sound Recording but must pay Tolliver artist royalties from sales of it because of his performance as a singer. (Tolliver Decl. ¶ 56; McCants Memo at 2-3.) The only dispute in this case concerns ownership of the Composition.

III. The Agreements between the Parties

No written contracts relating to the Album have surfaced. McCants claims that his former attorney Joseph Zynczack, Esq., who passed away in May 2005, maintained copies of most written agreements, but none were found in his files. (McCants Dep. Tr. at 115, 155-56.) The parties have different recollections of the agreements they made twenty-seven years ago.

Both sides recall a recording contract in which McCants agreed to pay artist royalties to Tolliver upon the sale of recordings in which Tolliver performed as a singer. (McCants Dep. Tr. at 153-55, 173-75; Tolliver Dep. Tr. at 81.) McCants admits that this recording contract was the only written agreement between them. (McCants Dep. Tr. at 153.) Tolliver does not remember if it was in writing. (Tolliver Dep. Tr. at 81.)

With respect to the compositions, McCants claims that they had an "understanding" or a "verbal agreement" whereby Tolliver assigned to McCants any income and credit to which Tolliver would be entitled as a writer. (McCants Dep. Tr. at 158-60, 171-75.) According to McCants, Tolliver made this assignment because he just wanted to hear the songs on the radio and did not want anyone to know he was involved with the project. (Id. at 171-72.)

By contrast, Tolliver asserts that they had a "gentlemen's agreement" in which McCants would collect and distribute any income generated by the compositions, and that "publishing" of "the whole 'I Need a Freak' project was 50/50." (Tolliver Dep. Tr. at 81-83, 243-44, 246.) In the briefs, this is referred to as an "administration and co-publishing agreement." Under the agreement, McCants's publishing company, Jimi Mac Music, would get half of the "publishing" from the Album, and a publishing company owned by Tolliver called "GO Music" would get the other half. (Id. at 186-88) Tolliver stated that he understood this agreement to mean that McCants would have only a passive income interest in the compositions as an administrator and co-publisher of them. (Id. at 263-64). According to Tolliver, the agreement did not grant McCants the right to license the compositions or otherwise exploit them without Tolliver's permission. (Id.)

According to undisputed expert testimony in the record, the custom in the music industry is to split income generated by a musical composition into two shares-a "songwriter" share and a "publisher" share. (Berger Decl. ¶ 49.) The publisher share is also referred to as the "publishing." (Id. ¶ 50.) If there is more than one publisher, then the publishing is divided among the co-publishers. (Id. ¶ 52.) In many arrangements, a party takes part in the publishing income but does not receive an ownership interest in the copyright. (Id. ¶ 61.) The only way to assign ownership of the composition is through a written document signed by the songwriter. (Id. ¶ 60.) When an assignment is made, the publisher usually demonstrates its ownership by registering its copyright or giving copyright notice on the album. (Id. ¶ 62) It is understood in the music industry that the songwriter retains ownership of the composition, notwithstanding a split of publishing income, unless the publisher gives notice to the contrary. (Id. ¶ 66.)

At deposition, Tolliver repeatedly stated that he did not remember whether he had any written agreement with McCants. (Tolliver Dep. Tr. at 81-83, 247.) Later on in the deposition, there was an exchange in which McCants's counsel, Scott Zarin, Esq., asked Tolliver if there was a written agreement "regarding the administration of the song I Need A Freak." (Id. at 247.)

The transcript records Tolliver's response as an affirmative, declarative statement, "For publishing." (Id.) Immediately following this response, there was a colloquy among the lawyers about the ambiguity of the word "song" because it could refer to either the Composition or the Sound Recording. (Id. at 248-49.) Zarin then agreed to use the word "composition" instead. (Id. at 249.) In a declaration executed after the deposition, Tolliver contends that he was confused by Zarin's question and in fact gave an interrogative response, but the transcriber mistakenly punctuated it with a period instead of a question mark. (Tolliver Decl. ¶ 57.) In other words, Tolliver was not testifying to the existence of a written publishing agreement, but was asking Zarin if his question referred to a written agreement "[f]or publishing?" (Id.) McCants characterizes Tolliver's explanation as an attempt to retract an admission of a written agreement. (McCants Response Memo at 21 n.12.)

IV. The Composition's Pseudonymous Release

The Composition was released as a single in 1982 and as a track on the Album in 1983. The cover of the Album credits "David Payton" as the writer of the Composition. (Warshavsky Decl. Ex. 2). It credits various other names with producing and arranging the compositions. (Id.) There are three publishers listed: "Jimi Mac Music," "GO Music," and a third party called "Ocean to Ocean Music." (Id.) The Album cover does not bear notice that any of the publishing companies owned copyright to the compositions. (Id.)

Several of the names on the Album cover, including the name "David Payton," are pseudonyms. Tolliver decided on the use of the pseudonyms to conceal his involvement with the Sexual Harassment project. (McCants Dep. Tr. 157-158.) Were his involvement known, rival radio stations might refuse to play the group's music. (Tolliver Decl. ΒΆ 40.) Furthermore, because he was a well-known radio personality, his association with the group ...

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