2014 Ohio 3478
Ohio Ct. App.2014Background
- In 1982 Tolliver and McCants siblings recorded a song; group allegedly agreed to share proceeds if money was made.
- Tolliver obtained a copyright for the composition in 2002; James McCants owned the recording copyright; McCants disputed Tolliver’s sole authorship claim.
- In 2005 James McCants licensed the song to Black Eyed Peas; Tolliver sued James in SDNY and courts found James infringed Tolliver’s rights; damages exceeded one million dollars.
- In 2011 McCants filed a copyright infringement suit in N.D. Ohio; the court dismissed for lack of actionable infringement, noting co-authorship issues and lack of federal jurisdiction for co-authors against co-owners.
- In 2012 McCants filed a state-law breach of contract claim against Tolliver and James; James defaulted in 2013; the trial court later granted Tolliver summary judgment concluding copyright law governed and precluded state-law relief.
- Ohio Court of Appeals reversed the-summary judgment ruling on preemption, sustaining McCants’ breach-of-contract claim as not preempted by federal copyright law and remanding for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the breach-of-contract claim is preempted by the Copyright Act | McCants argues the oral agreement to share proceeds adds a distinct, qualitative element not covered by copyright. | Tolliver contends state-law claims are preempted because they duplicate exclusive rights under copyright law. | Not preempted; contract breach claim survives preemption analysis. |
| If not preempted, whether the oral contract claim is viable in state court | The oral agreement to split proceeds licensing a shared expectation falls outside copyright infringement. | Preemption should bar state-law remedies whenever rights are equivalent to §106 rights. | Viable; not preempted; state-law breach claim may proceed. |
Key Cases Cited
- Temple v. Wean United, Inc., 50 Ohio St.2d 317 (1977) (summary judgment standard and burden shifting)
- Dresher v. Burt, 75 Ohio St.3d 280 (1996) (summary judgment burden on moving party; Civ.R. 56)
- State v. Perry, 83 Ohio St.3d 41 (1998) (copyright preemption framework; two-part inquiry)
- Wrench LLC v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001) (breach-plus-promise to pay as extra element overcoming preemption)
- Burr v. Nationwide Mut. Ins. Co., 2013-Ohio-4406 (9th Dist. 2013) (summary judgment standard; de novo review)