United States District Court, S.D. New York
OPINION & ORDER
A. Engelmayer United States District Judge.
John Wilson, Charles Still, and Terrance Stubbs seek
declaratory judgments that (1) they are the owners of the
renewal copyrights in the musical composition "Sho'
Nuff (You Really Love Him)," and a recording of this
song, which they authored and created in 1973; and (2) the
copyright on this composition and recording registered by
defendants in 1974 is invalid. Plaintiffs also seek
accountings under New York law with respect to earnings from
defendants' use of this composition and recording. In
addition, Edward "Eddie" Perrell-a former
defendant, now a cross-plaintiff-cross-claims against
defendant UMG Recordings, Inc. for an accounting of
its earnings from use of the recording.
Plaintiffs' purpose in pursuing this relief is to enable
them to obtain royalties from these works, which, in 2013,
were sampled in two popular hit songs, Justin
Timberlake’s “Suit & Tie” and J.
Cole’s “Chaining Day.”
Dynatone Publishing Company (“Dynatone”), UMG
Recordings, Inc. (“UMG”), and Unichappell Music,
Inc. (“Unichappell”) now move to dismiss all such
claims. Defendants argue that plaintiffs’ claims as
alleged in the Amended Complaint (“AC”) are
barred by the three-year statute of limitations for copyright
actions; and that the accounting claims fail to state a claim
both because they are time-barred and because the AC does not
allege a fiduciary relationship between plaintiffs and
following reasons, the Court grants the motion to dismiss.
were the members of the musical group “Sly, Slick &
Wicked,” which wrote and performed music in the 1970s.
AC ¶¶ 13–15, 26. Around early 1973, Wilson
wrote the musical composition “Sho’ Nuff (You
Really Love Him)” (“Sho’ Nuff”) while
traveling with Sly, Slick & Wicked and inspired by his
recent break up with his wife. Id. ¶ 33.
this time, Perrell was a music promoter based in New York
City who wanted to help Sly, Slick & Wicked obtain a new
recording agreement. Id. ¶¶ 29, 32.
Perrell liked “Sho’ Nuff” and, at his
suggestion, plaintiffs recorded “Sho’ Nuff”
in April 1973 at Studio 88 on 8th Avenue in Manhattan.
Id. ¶¶ 34–35. Perrell later played
that recording for representatives of James Brown’s
record label, People Records. Id. ¶¶
36–39. Perrell and Brown then modified the
“Sho’ Nuff” recording by adding strings and
bells. Id. ¶ 40.
recording: As to the “Sho’ Nuff”
recording, around June 28, 1973, People Records commercially
released a “single” record of it, which featured
Sly, Slick & Wicked’s song “Ready For
You” on the record’s B side (the “1973
Recording”). Id. ¶¶ 41, 48. The
credits on the label for the 1973 Recording list Perrell and
James Brown as producers of “Sho’ Nuff,”
id. ¶ 43; Sly, Slick & Wicked-with
plaintiffs’ names listed-is also listed on the label,
Jacobs Decl., Ex. 1. The label also states that the record
distributor was Polydor Incorporated (“Polydor”),
and includes, on its face, the words: “℗ 1973
Polydor Incorporated.” Id. Polydor was
successor-in-interest to People Records and
predecessor-in-interest to UMG. AC ¶¶ 23, 60.
Around this time, plaintiffs, as Sly, Slick & Wicked,
performed “Sho’ Nuff” on the television
show, “Soul Train.” Id. ¶ 42.
about June 26, 1973, Polydor registered a copyright in the
“Sho’ Nuff” recording, having acquired
ownership rights in People Records’s ownership interest
in the recording. Id. ¶¶ 60–61 &
Ex. D. In the registration, Polydor claimed to be sole owner
of the recording, which it termed a work made for hire.
Id. ¶ 62. Plaintiffs allege, however, that the
“Sho’ Nuff” recording was not a work for
hire for Polydor, because (1) it had been created before Sly,
Slick & Wicked had met with representatives from People
Records, and (2) no written agreement created a work for hire
relationship between Sly, Slick & Wicked and People
Records. Id. ¶¶ 65–66. Plaintiffs
further claim that they are co-owners, with Perrell and UMG
(as successor-in-interest to Polydor, which in turn was
successor-in-interest to UMG), of the recording. Id.
¶¶ 69–72. But, plaintiffs allege, they have
never received any remuneration from Perrell or UMG for the
recording, or any accounting in connection with earnings from
it; and that Perrell and UMG intentionally failed to give
plaintiffs an accounting of the earnings from the recording.
On December 21, 2001, UMG obtained a renewal registration for
the renewal term rights in the recording. Jacobs Decl., Ex.
composition: As to the “Sho’ Nuff”
composition, on or around May 12, 1973, plaintiffs registered
their claim to the copyright for that composition with the
United States Copyright Office. Id. ¶ 45 &
Ex. A. The copyright registration listed Wilson, Still, and
Stubbs as authors of the composition. Id. In
addition, on or about July 9, 1973, Perrell registered the
composition with Broadcast Music Inc. (“BMI”),
listing Perrell Music, Belinda Music, and Dynatone as
publishers. Id. ¶ 50. Perrell Music, Belinda
Music, and Dynatone were listed as receiving the entire
publisher’s share from the composition. Jacobs Decl.,
Ex. 2. The credits on the record label of the 1973 Release
include “Dynatone Pub. Co./Perrell Music/Belinda Music
(BMI)” as the publishers. Id., Ex. 1.
26, 1974, Chappell & Co., Inc., predecessor-in-interest
to defendant Unichappell, id. ¶ 20, registered
a copyright on the “Sho’ Nuff” composition,
listing plaintiffs as the authors and Dynatone Publishing
Company as the sole claimant. Id. ¶ 49 &
Ex. B.Plaintiffs allege, however, that they never
executed a written agreement with People Records, Dynatone,
or Belinda Music that transferred any interest in the renewal
term of the copyright of the composition. Id. ¶
51. And, they allege, Perrell and Dynatone “have been
collecting the music publisher’s share of performance
income for ‘Sho’ Nuff’ since 1973,”
and Perrell never provided them with any accountings of
royalties. Id. ¶¶ 52–53. Plaintiffs
also allege that, “after this dispute arose,”
Unichappell gave plaintiffs an accounting of royalties for
the period of 1992– 2013. Id. ¶ 56.
Finally, on November 19, 2015, several weeks before
initiating this action, plaintiffs filed, “as evidence
of their sole ownership of the renewal copyright,” a
copyright registration for the renewal term rights in the
“Sho’ Nuff” composition. Id.
¶ 58 & Ex. C.
is a musician, producer, songwriter, and performer in the
record industry. Cross-Claim ¶ 117. He alleges that, in
1973, after producing, with James Brown, various recordings
made by plaintiffs as “Sly, Slick & Wicked,”
plaintiffs entered into a written agreement with James
Brown’s People Records, which provided for plaintiffs
to record exclusively for People Records, and which also
assigned and transferred all copyright interests-including
plaintiffs’- to People Records. Id. ¶
119. Perrell was credited as a co-producer on the 1973
Recording of “Sho’ Nuff” and
Perrell’s music publishing company was credited as a
co-publisher of the “Sho’ Nuff”
composition. Id. ¶ 120. And, as a co-publisher
of the “Sho’ Nuff” composition, Perrell
alleges, he registered the composition with BMI. Id.
¶ 121. Perrell alleges that UMG never gave him with an
accounting or royalties from UMG in connection with the
recording. Id. ¶ 126. He seeks an accounting of
any royalties paid as a result of UMG’s alleged
sampling of the “Sho’ Nuff” recording in
Justin Timberlake’s “Suit & Tie” and J.
Cole’s “Chaining Day.” Id.
¶¶ 127– 32.
January 6, 2016, plaintiffs Wilson and Still filed a
complaint. Dkt. 1. They sued defendants, plus Perrell, BMI,
and Anheuser-Busch Companies, Inc. After various extensions
of time for defendants to respond, on July 22, 2016, Perrell
filed an answer and his Cross-Claim, Dkt. 40, and, on August
1, 2016, defendants ...