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Tolliver v. McCants

January 21, 2010


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

Opinion & Order

In 1982, Plaintiff Orrin Lynn Tolliver, Jr. ("Plaintiff" or "Tolliver") collaborated with Defendant James Louis McCants ("Defendant" or "McCants") on the recording of a musical composition entitled "I Need a Freak" (the "Composition"). In 2005, McCants licensed the Composition to the popular music group the Black Eyed Peas for use in their hit single "My Humps." On March 25, 2009, this Court granted summary judgment in favor of Plaintiff, finding that the license infringed upon Tolliver's copyright to the Composition. On May 26, 2009, the Court subsequently granted Defendant's motion for reconsideration, allowing him to reinstate several affirmative defenses to the copyright infringement claim. McCants then stipulated to dismiss all but two of the reinstated defenses. Before the Court is Plaintiff's motion for summary judgment on the last remaining affirmative defenses: acquiescence and waiver. For the reasons that follow, Plaintiff's motion is granted.


Familiarity with the facts and procedural history of this case is presumed. See Tolliver v. McCants, No. 05 Civ. 10840, 2009 WL 1473445 (S.D.N.Y. May 26, 2009) (reinstating affirmative defenses); Tolliver v. McCants, No. 05 Civ. 10840, 2009 WL 804114 (S.D.N.Y. Mar. 25, 2009) (granting summary judgment). The Court will briefly review those facts most relevant to the affirmative defenses at issue, all of which are undisputed except where noted.

A. The Recording and Release of "I Need A Freak"

In the early 1980s, Plaintiff Tolliver was a disc jockey for a radio station in Cleveland, Ohio. (Tolliver Decl. ¶ 12).

In 1982, Tolliver formed a concept band called Sexual Harassment and composed several songs for the group to perform, including "I Need a Freak." (Id. ¶¶ 27, 30). Tolliver recorded the track in McCants' studio at Heat Records (the "Sound Recording"). (Id. ¶¶ 26-27). On December 4, 1982, McCants caused the Composition to be registered with Broadcast Music, Inc. ("BMI"), a nonprofit organization that collects income from the public performance of musical compositions on behalf of artists. (Warshavsky Decl., Ex. D3). This registration lists "David Payton" as the writer of the Composition. (Id.). Although in 2000 McCants attempted to claim the name and ownership of the Composition for himself, (Warshavsky Decl., Ex. D8), the Court has previously established that "David Payton" is a pseudonym used by Tolliver to keep separate his radio personality and concept band endeavor.

The Composition was released as a single in 1982 and as a track on an album also entitled "I Need a Freak" distributed by Montage Records in 1983 (the "Album"). (Tolliver Dep. Tr. at 154). Tolliver testified that McCants had negotiated the distribution agreement with Montage Records. (Id. at 226-27). Shortly after its release, the Album sold over 100,000 copies. (Id. at 160-61). Sometime later in 1983, Tolliver learned of the Album's success from an employee of Montage Records and from an article in a music industry magazine. (Id. at 159-61, 226- 27). Despite the fact that a considerable number of records were sold, McCants testified that he was never paid for Montage Records' distribution of the Album. (McCants Dep. Tr. at 104-06).

In 2000, Tolliver discovered that the Sound Recording was included in a compilation album entitled "In Da Beginning . . . There Was Rap," released by Priority Records. (Tolliver Decl. ¶ 63). Tolliver assumed that Priority Records had secured a license for the Sound Recording from McCants, and that he would in turn issue a license for the Composition. (Id. ¶¶ 64-65). In response to an August 16, 2000 cease and desist letter from Tolliver's attorney demanding compensation for the exploitation by Priority Records, McCants denied issuing a license to Priority Records. (Id. ¶¶ 66-68; McCants Dep. Tr. at 215; Warshavsky Decl., Ex. D7). He did not claim that he had the right to issue the license. Indeed, in 2007 McCants testified that he had not authorized any third party to release the original Sound Recording of "I Need a Freak" at any time in the preceding ten years. (McCants Dep. Tr. at 219-20).

On August 9, 2002, Tolliver filed a copyright registration for the Composition with the U.S. Copyright Office. (Warshavsky Decl., Ex. D5).

At some point, Tolliver became aware of additional third party uses of the Composition on compilation albums for which he had not granted licenses or received royalties. McCants stated that he had nothing to do with the compilation albums and denied issuing licenses. (Rubin Decl. ¶¶ 22-23; McCants Dep. Tr. at 213-20).

On May 19, 2005, McCants issued a license to the Black Eyed Peas authorizing the group to use portions of the Composition in their own composition entitled "My Humps." (Warshavsky Decl., Ex. D10). In response to a September 8, 2005 letter from Tolliver's counsel objecting to the issuance of the Black Eyed Peas license without permission, McCants initially denied issuing the license, and later stated that he did issue a license to the Black Eyed Peas, but the license covered another song also entitled "I Need a Freak" distinct from the Composition at issue in this suit. (Rubin Decl. ¶¶ 29-30). While this claim is consistent with his 2007 deposition testimony that he had not authorized any third party use of the original Sound Recording in ten years, several license agreements for "I Need a Freak" (as written by "David Payton," the only song with that title of which the Court is aware), executed by McCants after 1997, including a license to the Black Eyed Peas, have since been produced.

On December 29, 2005, Tolliver filed the instant copyright infringement suit. In his motion for summary judgment, McCants claimed to own the rights to the Composition through an assignment from Tolliver. In its March 25, 2009 Opinion and Order, this Court found that Tolliver, as songwriter, is the sole owner of the Composition. Furthermore, there was no evidence to support the existence of a written assignment from Tolliver transferring his rights to McCants. Therefore, the ...

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