162 F. Supp. 3d 295
S.D.N.Y.2016Background
- This copyright/trademark case concerns a group of songs, sound recordings, and a Speed Records trademark arising from works created in the 1960s.
- Plaintiff TufAmerica claims ownership by contract with Morton Craft and asserts discovery of two 2004 agreements granting exclusive, perpetual rights to Plaintiff.
- Defendants Codigo Music LLC and COMG (and Craft) contend pre-2004 ownership lay elsewhere, including Music/Label history and various transfers; they rely on a DNJ Settlement (2009) and subsequent asset transfers.
- A 2006 licensing deal allowed Christina Aguilera to sample the Hippy Skippy Sound Recording, triggering later ownership disputes and a DNJ Settlement clarifying some rights.
- The court faces competing, heavily fact-bound theories about who owned the Happy Man Composition and related derivative works prior to 2004, and whether the 2004/2004 Amendment agreements are valid and enforceable.
- Cross-motions for summary judgment are granted in part and denied in part pending trial on key ownership questions and related contract defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Pre-2004 ownership of the Happy Man Composition | Marin owned Happy Man; Craft claims ownership via assignment/works-for-hire. | Marin never assigned; Craft/Speed owned rights or ownership is unsettled. | Genuine issues of material fact exist; cannot determine pre-2004 ownership at this stage. |
| Pre-2004 ownership of Happy Man, Happy Soul, and Happy Soul with a Hook Sound Recordings | Craft/SPEED owned and transferred rights to Plaintiff via 2004 Agreements. | Speed or Roulette acquisitions and other transfers show different owners; unresolved. | Triable issues of material fact remain; pre-2004 chain of title is unsettled. |
| Enforceability of the 2004 Agreements (fraud, undue influence, unclean hands) | Craft validly signed and intended 2004 Agreements; Plaintiff owns rights. | Possible fraud in execution and undue influence; signatures/information may be manipulated; enforceability contested. | Fraud in execution and undue influence contested; triable issues remain; unclean-hands partly acknowledged. |
| Trademark ownership/claims in Speed and related Lanham Act issues | Plaintiff owns the Speed trademark via 2004 Agreements or prior transfers. | Ownership in Speed is contested; transfers via older agreements or DNJ settlements unclear. | Triable issues exist as to ownership; Lanham Act claims not fully resolvable on summary judgment. |
Key Cases Cited
- Flo & Eddie, Inc. v. Sirius XM Radio Inc., 80 F. Supp. 3d 535 (S.D.N.Y. 2015) (work-for-hire/derivative rights; pre-1972 sound recordings)
- Arista Records LLC v. Lime Grp. LLC, 784 F. Supp. 2d 398 (S.D.N.Y. 2011) (preemption; common-law copyright claims mirror federal theory)
- In re Cellco P’ship, 663 F. Supp. 2d 363 (S.D.N.Y. 2009) (derivative works require underlying-ownership authorization)
- Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 206 F.3d 1322 (9th Cir. 2000) (assignment of common-law copyrights; factual questions for jury)
- Martha Graham Sch. & Dance Found., Inc. v. Martha Graham Ctr. of Contemporary Dance, Inc., 380 F.3d 624 (2d Cir. 2004) (ownership/control evidence; conduct surrounding works)