David Batiste v. Island Records, Inc.David Batiste v. Island Records, Inc.
R. Patrick Vance, Timothy Scott Cragin, Jones, Walker, Waechter, Poitevent, Carrere & Denegre, New Orleans, LA, for Island Records, Inc., Island Records, Ltd., MCA Music Publishing, Attrell Cordes, Wade Featherstone and Gee Street Records, Inc.
Charles B. Ortner, Sandra A. Crawshaw, Paul, Hastings, Janofsky & Walker, New York City, for Island Records, Inc., Island Records, Ltd., MCA Music Publishing аnd Gee Street Records, Inc.
Ellis Jay Pailet, New Orleans, LA, for Isaac Bolden.
Appeal from the United States District Court for the Eastern District of Louisiana.
KING, Chief Judge:
Attrell Cordes, a successful singer and songwriter who performs with his brother under the name “P.M. Dawn,” used a digital sample of a musical composition that was originally written and recorded by David, Paul, and Michael Batiste. Cordes included the digital sample in a song on a highly successful album that was released by Island Records, Inc. and Gee Street Records, Inc., and the Batistes seek damages and injunctive relief for alleged copyright infringement and violations of the Lanham Act,
I. FACTUAL BACKGROUND
David, Paul and Michael Batiste (collectively, the Batistes) are three brothers who, while performing together as a group known as “David Batiste & the Gladiators,” wrote a musical composition called “Funky Soul” in 1968. The Batistes performed “Funky Soul” in New Orleans and recorded the song in 1970 with the assistance of Isaac Bolden, a local music publisher and record producer.
Shortly after the recording session for “Funky Soul,” Bolden obtained a certificate of copyright registration for the musical composition identifying David Batiste as its sole writer. Bolden authorized the manufacture and release of two records containing “Funky Soul” in 1970, but neither record was a commercial success.
Attrell Cordes and his brother perform together in the highly successful musical group “P.M. Dawn.” In 1992, Cordes purchased a copy of the “Funky Soul” record and decided to sample it for use in a song of his own entitled “So On and So On” (“So On“). Cordes recorded a six and one-half second portion of “Funky Soul” from the record he purchased and used digital technology to modify the recording. Cordes used this digital sample in his song “So On” that was included on “the Bliss Album,” which Island Records, Inc.1 and its affiliate, Gee Street Records, Inc. (Gee Street), released on March 15, 1993.
Prior to “the Bliss Album” release, Gee Street determined that Bolden held all rights to the “Funky Soul” musical composition and sound recording and entered into three contracts with him: (1) a Master Recording Sampling License, on January 26, 1993; (2) a Mechanical License Agreement, on March 3, 1993; and (3) an Administration Agreement, on April 27, 1993. Under the Master Recording Sampling License, Bolden granted Gee Street “the non-exclusive right to manufacture [r]ecords embodying that certain Master Recording, entitled ‘So On & So On’ ... [which] contains an interpolation of [Bolden‘s] master recording, entitled ‘Funky Soul.’ ” Under the Mechanical License Agreement, Bolden consented to Gee Street‘s release of “So On,” which “interpolates a portion of the musical composition entitled ‘Funky Soul.’ ” Finally, under the Administration Agreement, Bolden and MCA Music Publishing (MCA) agreed that Bolden owns a forty percent share of “So On,” and that Bolden “grants licenses and аssigns to [MCA] exclusively the copyright and all other rights ... in and to [‘So On‘].” In exchange for his allowing the use of the “Funky Soul” sample, Gee Street paid Bolden a $15,000 advance against record royalties in February 1993.
The liner notes accompanying “the Bliss Album” credit “D. Batiste” as a co-writer of “So On” and state that ” ‘Funky Soul’ performed by David Batiste & The Gladiators [is] used under license by Isaac Bolden.” The Batistes admit that they learned that a portion of “Funky Soul” was used in “So On” no later than July 1993, and that they prepared and submitted an application to register as co-writers of “So On” with Broadcast Music, Inc., a well-known performing rights society.
II. PROCEDURAL HISTORY
The Batistes filed this suit in the United States District Court for the Eastern District of Louisiana on March 10, 1995, alleging that Island Records, Gеe Street, MCA, Cordes, Bolden, and Wade Featherstone violated federal copyright laws,
The district court granted defendants summary judgment on all of David Batiste‘s claims, and on all of Paul and Michael Batiste‘s claims except conversion and misappropriation.3 The court found that the Songwriter‘s Contract effectively transferred any interest David Batiste had in “Funky Soul” to Bolden, that Bolden had authorized defendants to use the composition, and that therefore the Batistes had failed to raise a genuine issue of material fact on their copyright infringement claims. The district court also determined that the Batistes failed to raise an issue of material fact that defendants had violated the Lanham Act because “Funky Soul” was attributed to “David Batiste & The Gladiators” in the liner notes accompanying the album, and that defendants’ actions were not unfair or deceptive under the LUTPL because David Batiste transferred any interest he had in the “Funky Soul” composition to Bolden in exchange for royalties and the Batistes failed to produce any evidence indicating that defendants knew or should have known of any interest in “Funky Soul” held by Paul and Michael Batiste. Finally, the district court granted summary judgment on David Batiste‘s conversion and misappropriation claims because he had transferred any ownership rights he held to Bolden in 1970, but the court refused to grant summary judgment on similar claims raised by Paul and Michael Batiste because they “need only establish that the defendants are in possession of property which belongs to them.” In subsequent orders, the district court dismissed the Batistes’ claims against Featherstone as lacking personal jurisdiction and dismissed their remaining state-law claims under
III. DISCUSSION
The Batistes argue on appeal that the district court erroneously granted defendants summary judgment on their copyright infringement, Lanham Act, LUTPL, and conversion and misappropriation claims, and that Featherstone had sufficient minimum contacts with the state of Louisiana for the court to exercise personal jurisdiction.5 Defendants cross-appeal, arguing that the district court abused its discretion by dismissing without prejudice the Batistes’ surviving state-law claims.6 We address these arguments in turn.
A. Copyright Infringement
The Batistes argue that the district court erred in granting summary judgment on their copyright infringement claims because defendants’ use of “Funky Soul” infringed the “Funky Soul” copyright and was not authorized by the 1970 Songwriter‘s and Artist Contracts or the three contracts that Bolden entered into in 1993. The Batistes contend that the Songwriter‘s and Artist Contracts between David Batiste and Bolden are invalid because David Batiste does not remember signing them and the contracts are “suspect enough to raise a factual issue.” Furthermore, the Batistes argue that these contracts did not anticipate or authorize the digital sampling method at issue, and that the contracts cannot apply to Paul and Michael Batiste because they were minors at the time and did not authorize David Batiste to negotiate on their behalf.
“We review a grant of summary judgment de novo, applying the same criteria used by the district court in the first instance.” Texas Manufactured Housing Ass‘n v. City of Nederland, 101 F.3d 1095, 1099 (5th Cir.1996); see Tolson v. Avondale Indus., Inc., 141 F.3d 604, 608 (5th Cir.1998). Summary judgment is proper “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.”
The only question that we face regarding the Batistes’ copyright claims is whether the Batistes have successfully demonstrated a genuine issue of material fact that the multiple contracts among the parties are insufficient to authorize defendants’ use of a digital sample of “Funky Soul” in their song “So On.” After carefully examining the contracts between David Batiste and Bolden and the contracts bеtween Bolden and Gee Street/MCA, we agree with the district court‘s conclusion that there is no such issue of material fact and that defendants are entitled to summary judgment on these claims.
The Batistes point to no evidence supporting their allegation that the 1970 contracts are invalid or otherwise “suspect,” and David Batiste‘s inability to remember signing them is not sufficient to raise a material issue as to the validity of the agreements. See Lone Star Indus., Inc. v. Nelstad Material Corp., 811 F.Supp. 147, 149 (S.D.N.Y.1993). David Batiste granted Bolden the entire musical composition, including the exclusive right to secure copyright, “all rights of whatsoever nature” relating to the copyright, and the right to license, “in any or all fields of use, by any method now or hereafter known, throughout the world, records embodying the рerformances.” Such a grant is sufficiently broad to include the licensing of a record containing a digital sample of “Funky Soul.” Cf. Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481, 485-88 (2d Cir.1998) (concluding that 1939 agreement conveying the right “to record [a composition] in any manner, medium or form” for use “in [a] motion picture” is sufficiently broad to include distribution of the motion picture in laser disc format); Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881, 885 (9th Cir.1996) (stating that right to synchronize music in any future technologies, including videocassettes, is included in clause granting party all the music rights of a motion picture). Finally, we note that the validity of Paul and Michael Batiste‘s allegations that David Batiste did not have authority to enter the 1970 contracts on their behalf is immaterial to their claims of copyright infringement against any party‘s use that was authorized by their brother. See Quintanilla v. Texas Television Inc., 139 F.3d 494, 498 (5th Cir.1998) (” ‘A co-owner of a copyright cannot be liable to another co-owner for infringement of the copyright.’ “) (quoting Oddo v. Ries, 743 F.2d 630, 632-33 (9th Cir.1984)); Cortner, 732 F.2d at 271 (“It is elementary that the lawful owner of a copyright is incapable of infringing a copyright interest that is owned by him; nor can a joint owner of a copyright sue his co-owner for infringement.“); MELVIN B. NIMMER & DAVID NIMMER, 1 NIMMER ON COPYRIGHT § 6.10 (1999) [hereinafter NIMMER] (“[A]n authorization to the defendant from one joint owner will be an effective defense to an infringement action brought by another joint owner.“).
B. Lanham Act
The Batistes argue that the district court erroneously granted summary judgment on their claims that defendants “mutilate[d]” “Funky Soul” and that this “abuse” of their work amounts to “reverse passing off” in violation of § 43(a) of the Lanham Act,
In Gilliam, the Second Circuit considered a claim by a group of authors and performers known as “Monty Python” seeking a preliminary injunction to prevent the American Broadcasting Company (ABC) from broadcasting edited versions of three of their programs. See 538 F.2d at 17. The Second Circuit enjoined the broadcasts, concluding that the group had shown a likelihood of succeeding on the merits of their claims that the editing exceeded the scope of ABC‘s license. See id. at 22-23. The court further determined that the group would likely succeed on its claim under the Lanham Act that, “regardless of the right ABC had to broadcast an edited program, the cuts made constituted an actionable mutilation of Monty Python‘s work,” and that such a cause of action “finds its roots in the continental concept of droit moral, or moral right, which may generally be summarized as including the right of the artist to have his work attributed to him in the form in which he created it.” Id. at 23-24; see 3 NIMMER at § 8D.04[A].
Even if we were to adopt the reasoning of the Second Circuit and determine that the “manipulation” that “Funky Soul” suffered is sufficient to state a cause of action under the Lanham Act, we still must conclude that summary judgment in favor of defendants was proper because the Batistes have failed to demonstrate the existence of a genuine issue of likelihood of confusion. See
The Batistes argue that the district court erred in granting defendants summary judgment on their claims of unfair trade practices under the LUTPL, conversion, and misappropriation. The Batistes again contend that the district court improperly determined that the Songwriter‘s and Artist Contracts that David Batiste entered into in 1970 are valid and authorize defendants’ use of “Funky Soul.”
The Batistеs’ claims of unfair trade practices, conversion and misappropriation are delictual under Louisiana law and are therefore subject to a one-year prescriptive period. See
“[T]he Bliss Album” containing the digital sample of “Funky Soul” was released in March 1993, and the Batistes admit that by July 1993 they knew that defendants had used “Funky Soul” without their permission. Nonetheless, the Batistes did not file this suit until March 1995. In their reply brief, the Batistes argue that this court held in Songbyrd, Inc. v. Bearsville Records, Inc., 104 F.3d 773 (5th Cir.1997), that an action to recover for misappropriation of masters and sound recordings is not subject to liberative prescription, and that “this case involves a direct dispute over ownership of the master rights.” The Batistes further contend that their remaining state law claims are saved from prescription by the doctrine of equitable tolling--specifically, they claim that defendants’ “absolute refusal to provide information” after the Batistes contacted Bolden and defendants in mid-1993 acted to toll the prescriptive period and makes their present claims timely.
The Batistes’ arguments misconstrue both our decision in Songbyrd and the equitable tolling doctrine, and neither of these contentions saves their state-law claims from the applicable one-year prescriptive period. Initially, we note that our determination that the plaintiff‘s cause of action in Songbyrd was not subject to the one-year prescriptive period relied on our conclusion that the plaintiff‘s claim, which sought recognition of its ownership interest in physical master recordings and the return of those recordings, was a “revindicatory action” seeking the return of property rather than a “personal action.” See Songbyrd, 104 F.3d at 777. The Batistes, however, do not assert, and there is no evidence suggesting, that defendants ever possessed the physical master recording or any other physical property belonging to the Batistes. Rather, the Batistes argue that the “Funky Soul” sound recording was misappropriated because defendants used it in “So On,” and they seek damages for this use. The Batistes’ claims are therefore properly considered “personal аctions” and are subject to the one-year prescriptive period. See id. at 777-79. Finally, we decline the Batistes’ invitation to invoke the equitable tolling doctrine because the Batistes admit that they knew the facts underlying their cause of action and sought legal advice on how to pursue their claims more than one year prior to filing suit against defendants. Cf. Kavanaugh v. Long, 698 So.2d 730, 738 (La.Ct.App.1997) (stating that equitable tolling suspends prescriptive period for medical malpractice claim, “but only until the patient knew or should have known of the malpractice or concealment from other sources“). We therefore affirm the district court‘s grant of summary judgment in favor of defendants on the Batistes’ claims of unfair trade practices, and on Dаvid Batiste‘s claims of misappropriation and conversion.
Following the district court‘s entry of summary judgment on all the Batistes’ claims against defendants except Paul and Michael Batiste‘s claims of conversion and misappropriation, the court declined to retain supplemental jurisdiction over the remaining claims under
We review a district court‘s decision to decline jurisdiction over pendent state-law claims for an abuse of discretion. See Robertson v. Neuromedical Ctr., 161 F.3d 292, 296 (5th Cir.1998); McClelland v. Gronwaldt, 155 F.3d 507, 519 (5th Cir.1998). “Our review is guided by the relevant statutory provisions governing the exercise of supplemental jurisdiction, see
Although we have stated that our “general rule” is to decline to exercise jurisdiction over pendent state law claims when all federal claims are dismissed or otherwise eliminated from a case prior to trial, this rule is neither mandatory nor absolute. McClelland, 155 F.3d at 519 (citing Wong v. Stripling, 881 F.2d 200, 204 (5th Cir.1989)); see Cohill, 484 U.S. at 350 n. 7 (stating that “in the usuаl case in which all federal-law claims are eliminated before trial, the balance of factors to be considered under the pendent jurisdiction doctrine ... will point toward declining to exercise jurisdiction over the remaining state-law claims“). Thus, while the district court‘s dismissal of the Batistes’ federal claims “provides ‘a powerful reason to choose not to continue to exercise jurisdiction,’ no single factor is dispositive in this analysis.” McClelland, 155 F.3d at 519 (quoting Cohill, 484 U.S. at 351); see Newport Ltd. v. Sears, Roebuck and Co., 941 F.2d 302, 307 (5th Cir.1991). We therefore must review the district court‘s decision “in light of the specific circumstances of the case at bar.” McClelland, 155 F.3d at 519; see Parker & Parsley Petroleum Co. v. Dresser Indus., 972 F.2d 580, 585 (5th Cir.1992).
We begin our analysis of the factors relevant to the pendent jurisdiction inquiry by noting that the remaining claims do not involve any “novel or complex” issues of state law. Newport Ltd., 941 F.2d at 308 (stating that district court abused its discretion in allowing plaintiff to voluntarily dismiss state-law claims because, inter alia, the remaining issues “present no novel or especially unusual questions which cannot be readily and routinely resolved by the court a ‘quo “); cf. McClelland, 155 F.3d at 519-20 (“[O]ur section 1367(c) analysis results in the conclusion that remand is appropriate” based, in part, on the presence of “at least one ‘novel or complex’ issue of state law.“); Parker & Parsley Petroleum, 972 F.2d at 589 (stating that principles of federalism and comity “point strongly toward dismissal” because “[a]ll of the remaining legal issues of the case, of course, are of state law ... [and] are difficult ones“). The district court here had already granted defendants summary judgment on some state-law сlaims, and, as we set forth above, all state-law claims are prescribed. The absence of any difficult state-law questions thus weighs heavily toward our conclusion that the district court abused its discretion in refusing to retain jurisdiction over the remaining claims.
After considering and weighing all the factors present in this case, and relying especially on our conclusion that the district court was intimately familiar with the Batistes’ claims and the absence of any difficult state-law issue in the remaining claims, we thus conclude that the district court abused its discretion and reverse its decision dismissing Paul and Michael Batiste‘s conversion and misappropriation claims without prejudice. Furthermore, in the interest of further judicial economy and in light of our determination above that the Batistes’ state-law claims are prescribed, we remand Paul and Michael Batiste‘s conversion and misappropriation claims to the district court with instructions to enter judgment in favor of all defendants except Bolden, disposing of all claims against such defendants.
IV. CONCLUSION
For the foregoing reasons, we AFFIRM the judgment of the district court granting defendants summary judgment and dismissing Featherstone for lack of personal jurisdiction, REVERSE the district court‘s dismissal of Paul and Michael Batiste‘s misappropriation and conversion claims against all defendants except Bolden, and REMAND with instructions to enter judgment in favor of such defendants on those claims.
Notes
We find no merit in defendants’ argument. Initially, we note that the district court subsequently amended its September 8 order to explicitly state that it had granted summary judgment on all David Batiste‘s claims, and on all of Paul and Michael Batiste‘s claims except their state-law claims for conversion and misappropriation, and that the court entered partial judgment on the copyright claims under Federal Rule of Civil Procedure 54(b). These actions demonstrate that the district court did deny defendants’ motion to dismiss, and we agree with its determination that the Batistes may properly assert their copyright infringement claims as beneficial owners of Bolden‘s registered copyright. See
(1) the claim raises a novel or complex issue of State law,
(2) the claim substantially predominates over the claim or claims over whiсh the district court has original jurisdiction,
(3) the district court has dismissed all claims over which it has original jurisdiction, or
(4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.”
Any person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which ... is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.