388 F. Supp. 3d 277
S.D. Ill.2019Background
- Plaintiffs (a band and two members) seek a declaratory judgment that Woody Guthrie's "This Land is Your Land" is in the public domain and that defendants TRO and Ludlow do not own enforceable copyrights; they also seek injunctive relief and damages.
- Guthrie wrote and circulated versions of the song in the 1940s; Ludlow later filed multiple Copyright Office registrations (1956, 1958, 1970, 1972) claiming narrow new matter (arrangements, a piano accompaniment, and two verses) but did not disclose earlier publications in some filings.
- Plaintiffs paid $45.50 for a compulsory mechanical license to distribute a cover (Version 1) but allege the payment was involuntary; they also recorded an altered-melody Version 2 and want to release a music video, both of which they say would require additional licenses and expose them to infringement liability.
- Plaintiffs assert federal declaratory relief under the Copyright Act and the Declaratory Judgment Act, plus state-law claims (N.Y. Gen. Bus. Law § 349; breach of contract; money had and received; rescission).
- Defendants moved to dismiss for lack of subject-matter jurisdiction (no Article III case or controversy) and for preemption of the state-law claims by the Copyright Act.
- The court found Plaintiffs had standing (actual controversy under MedImmune based on involuntary payment and intent to use disputed material) but held all state-law claims preempted and dismissed them with prejudice; copyright claims remain.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Article III standing for declaratory relief | Payment of compulsory license was involuntary; Plaintiffs intend to release Version 2 and a video, creating a real dispute | No reasonable apprehension of suit; no imminent threat because Plaintiffs only obtained a mechanical license and have no further contact | Plaintiffs have standing under MedImmune: involuntary payment plus intent/ability to use disputed work creates a justiciable controversy |
| Whether state-law claims are preempted by Copyright Act | State claims allege deceptive practices, breach, restitution, rescission distinct from copyright rights | State claims seek to redress harms tied to asserted copyright ownership and thus are equivalent to copyright rights | All four state-law claims are preempted because they seek to vindicate rights equivalent to exclusive rights under the Copyright Act; dismissed with prejudice |
| Scope of Ludlow's claimed copyrights | Plaintiffs: Ludlow's registrations (limited to arrangements/new verses) do not validate exclusive ownership of melody/lyrics; song is public domain | Defendants assert ownership (did not disclaim), previously asserted rights against others, and hold registrations | Court did not resolve substantive copyright validity at dismissal stage; required defendants to answer remaining copyright claims |
| Burden of proof in declaratory non-infringement action | Plaintiffs seek declaration of non-infringement; argue defendants should justify asserted copyright | Defendants ambiguously preserve infringement claims and challenge standing | Court noted Medtronic principle: defendants (copyright owners) bear burden to show they possess/protect the asserted rights; court rejected defendants' attempt to have it both ways |
Key Cases Cited
- MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (Sup. Ct.) (payment under protest can create an actual controversy for declaratory relief)
- Already, LLC v. Nike, Inc., 568 U.S. 85 (Sup. Ct.) (an unconditional covenant not to sue can moot a declaratory judgment action)
- Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (Sup. Ct.) (burden of proving infringement remains with the patentees/rights-holders in a declaratory judgment context)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (Sup. Ct.) (pleading standard: plausibility required)
- Ashcroft v. Iqbal, 556 U.S. 662 (Sup. Ct.) (legal conclusions not entitled to assumed truth in Rule 12(b)(6) analysis)
- Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296 (2d Cir.) (preemption test: state claim must have extra elements qualitatively different from copyright rights)
- Forest Park Pictures v. Universal Television Network, Inc., 683 F.3d 424 (2d Cir.) (two-prong preemption framework under §301 of the Copyright Act)
- Barclays Capital Inc. v. Theflyonthewall.com, Inc., 650 F.3d 876 (2d Cir.) (scope of copyrightable subject matter is broad)