David Jones v. West Plains Bank & Trust Co.
813 F.3d 700
| 8th Cir. | 2015Background
- David Lynn Jones (songwriter) recorded ~150 songs on reels and later gave tapes and equipment to engineer Bobby Roberts for digitization; at least 39 songs had performing-arts copyrights.
- Roberts defaulted on a loan from West Plains Bank; the bank repossessed studio equipment and tapes and sold them at a public foreclosure auction to Roger Thompson.
- Jones demanded return; bank and Thompson refused. They did not copy, sell, or perform the recordings.
- Jones sued West Plains Bank and Thompson for copyright infringement and conversion; defendants moved to dismiss the copyright claim because sound recording registrations were not obtained before suit was filed.
- The district court dismissed the copyright claim for lack of preregistration and for failure to allege copying (possession alone insufficient), denied leave to amend after Jones later obtained registrations, and certified the dismissal as final under Fed. R. Civ. P. 54(b).
- The Eighth Circuit concluded the district court abused its discretion in granting Rule 54(b) certification and dismissed the appeal for lack of jurisdiction; the conversion claim remained pending in district court.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Jones could maintain a copyright-infringement suit without preregistration of the sound recordings | Jones argued performing-arts registrations plus later-acquired sound-recording registrations (obtained 5 days after dismissal) should allow the claim or relate back | Defendants argued registration was a jurisdictional prerequisite and Jones admitted he had not registered before filing | District court dismissed initially for lack of preregistration; Eighth Circuit did not reach the merits due to lack of jurisdiction on appeal |
| Whether mere possession of master tapes constitutes "copying" for infringement | Jones contended defendants’ possession and refusal to return interfered with his exclusive rights | Defendants maintained they merely possessed the tapes and never reproduced or distributed the recordings | District court held possession alone did not plead the necessary element of copying; Eighth Circuit did not resolve merits because appeal was dismissed for lack of jurisdiction |
| Whether the district court abused discretion in denying leave to amend to add newly obtained registrations | Jones sought leave to amend to add factual allegations and sound-recording registrations obtained during litigation | Defendants opposed amendment as raising issues already decided | District court denied leave to amend; Eighth Circuit did not address the substantive denial because it dismissed the appeal for lack of jurisdiction |
| Whether Rule 54(b) certification of the copyright dismissal was proper | Jones sought immediate appeal under Rule 54(b), arguing significance of statutory damages and efficiency | Defendants favored certification to conclude copyright claim and avoid protracted litigation | Eighth Circuit held the district court abused its discretion granting 54(b) certification because it failed to weigh hardship/judicial interests and there was risk of piecemeal appeals; appeal dismissed for lack of jurisdiction |
Key Cases Cited
- Outdoor Cent., Inc. v. GreatLodge.com, Inc., 643 F.3d 1115 (8th Cir. 2011) (appellate courts must independently consider jurisdiction)
- Alpine Glass, Inc. v. Country Mut. Ins. Co., 792 F.3d 1017 (8th Cir. 2015) (Rule 54(b) should be used sparingly)
- Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1 (U.S. 1980) (Rule 54(b) requires a final judgment on a claim)
- Williams v. Cty. of Dakota, 687 F.3d 1064 (8th Cir. 2012) (district court must consider equities and judicial administration for 54(b))
- Clark v. Baka, 593 F.3d 712 (8th Cir. 2010) (deference to district court on 54(b) but court must weigh competing interests)
- Taco John's of Huron, Inc. v. Bix Produce Co., LLC, 569 F.3d 401 (8th Cir. 2009) (54(b) not to be used merely for counsel convenience; hardship required)
- Hayden v. McDonald, 719 F.2d 266 (8th Cir. 1983) (district court must weigh competing interests for 54(b) certification)