968 F. Supp. 2d 588
S.D.N.Y.2013Background
- TufAmerica sues the Beastie Boys and related parties for copyright infringement over alleged samples of Trouble Funk works in Licensed to Ill and Paul’s Boutique.
- Trouble Funk copyrights were registered 1982–1986; TufAmerica became exclusive administrator/licensee in 1999.
- Beastie Boys’ albums Licensed to III (1986) and Paul’s Boutique (1989) allegedly incorporated Trouble Funk samples.
- Plaintiff asserted four original copyright infringement claims, later adding two more for musical compositions and sound recordings.
- Defendants moved to dismiss under Rule 12(b)(6); the court partially grants and partially denies the motion and applies the injury rule to remaining claims.
- The court analyzes substantial similarity using a fragmented literal similarity framework and discusses accrual under 17 U.S.C. § 507(b).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiff pleads actionable infringement for the samples | Plaintiff argues sufficient copying and substantial similarity. | Defendants contend the samples are de minimis or non-copyrightable. | Partially with respect to some samples; some claims survive, others dismissed. |
| What test governs substantial similarity for these samples | Plaintiff urges fragmented literal similarity; focus on core copied portions. | Defendants advocate ordinary observer (global) test. | Court adopts fragmented literal similarity analysis for these samples. |
| Whether certain samples are non-copyrightable or de minimis | Claims allege qualitative significance of sampled portions. | Some samples are common or non-original, thus not protectable. | Some samples dismissed as de minimis or non-copyrightable; others survive. |
| Whether using statements from the original complaint can defeat the amended complaint | Admissions in prior pleading may bind but do not defeat the amended claims. | Omitted phrases are binding admissions that defeat claims. | Court permits consideration but treats them cautiously; ultimately the amended complaint remains operative for analysis. |
| Whether accrual is governed by injury rule or discovery rule and period applied | Discovery rule should apply, delaying accrual. | Injury rule should apply, triggering accrual at each infringing act. | Injury rule applied; claims limited to acts after May 12, 2009. |
Key Cases Cited
- Warner Bros. Entm’t, Inc. v. RDR Books, 575 F. Supp. 2d 513 (S.D.N.Y. 2008) (prima facie infringement; originality; copying elements must be original)
- Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57 (2d Cir. 2010) (comparison of works; substantial similarity standard in context of copyright)
- Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70 (2d Cir. 1997) (fragmented literal similarity framework; substantial similarity measures copy’s qualitative/quantitative significance)
- Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132 (2d Cir. 1998) (flexible tests for substantial similarity in copyright cases)
- Feist Publ’ns v. Rural Tel. Co., 499 U.S. 340 (1991) (requirement of originality for copyright protection)