umg beasties

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

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TUFAMERICA, INC.,

Plaintiffs

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MICHAEL DIAMOND, et al.,

Defendants.

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Case No. 12 Civ. 3529 (AJN)

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MEMORANDUM OF LAW IN SUPPORT OF

UNIVERSALPOLYGRAM INTERNATIONAL PUBLISHING, INC. AND

CAPITOL RECORDS, LLCS MOTION FOR SUMMARY JUDGMENT

Case 1:12-cv-03529-AJN Document 75 Filed 06/09/14 Page 1 of 23


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TABLE OF AUTHORITIES

Page(s)

CASES

Cafferty v. Scotti Bros. Records, Inc.,969 F. Supp. 193 (S.D.N.Y. 1997)...........................................................................................19

Contractual Obligation Productions, LLC v. AMC Networks, Inc.,

No. 04 Civ. 2867(BSJ)(HBP), 2006 WL 6217754 (S.D.N.Y. Mar. 31, 2006) ..................13, 18

Cortner v. Israel,732 F.2d 267 (2d Cir. 1984).....................................................................................................18

Eden Toys, Inc. v. Florelee Undergarment Co.,697 F.2d 27 (2d Cir. 1982).......................................................................................................13

John Wiley & Sons, Inc. v. DRK Photo,--- F. Supp. 2d ---, No. 11 Civ. 5454(KPF), 2014 WL 684829 (S.D.N.Y. Feb. 21,2014) ........................................................................................................................................17

McDonald v. Brown,No. 12 Civ. 7109(WHP), 2014 WL 116003 (S.D.N.Y. Jan. 13, 2014) .............................12, 13

Newsome v. Brown,

209 F. Appx 11 (2d Cir. 2008) ...............................................................................................17

Poindexter v. EMI Record Group Inc.,

No. 11 Civ. 559(LTS)(JLC), 2012 WL 1027639 (S.D.N.Y. Mar. 27, 2012) ..........................18

Robinson v. Double R Records,

No. 04 Civ. 4120(KMW), 2007 WL 2049724 (S.D.N.Y. July 16, 2007) ...............................18

Werbungs Und Commerz Union Austalt v. LeShufy,

No. 84 Civ. 7393(PNL), 1987 WL 33618 (S.D.N.Y. Dec. 24, 1987) .....................................19

STATUTES

17 U.S.C. 501(b) .........................................................................................................................13

OTHERAUTHORITIES

Fed. R. Civ. P. 56(a) ......................................................................................................................12



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Defendants Universal-Polygram International Publishing, Inc. (UMG-Polygram;

incorrectly named as Universal Music Publishing, Inc. and Universal Music Publishing Group)

and Capitol Records, LLC (Capitol, together with UMG-Polygram, UMG Defendants), by

and through their attorneys, respectfully submit this Memorandum of Law in support of their

motion for summary judgment pursuant to Federal Rule of Civil Procedure 56 dismissing

Plaintiff TufAmerica, Inc.s (TufAmerica) complaint against them, and each and every claim

asserted therein, as a matter of law.

PRELIMINARY STATEMENT

In 1999, two members of the group Trouble Funk purported to transfer specific rights in

certain sound recordings performed by the group Trouble Funk, as well as the musical

compositions embodied in those sound recordings to TufAmerica. Since that time, TufAmerica

has purported to act as the exclusive administrator and licensee of those properties. As

discovery in this case has revealed beyond dispute, TufAmericas rights in the Trouble Funk

sound recordings at issue are an empty letter. Nearly 20 years ago, Trouble Funk assigned the

copyright interests in the very same sound recordings that form the basis of the claims in this

case to Island Records, Inc. (Island), a record label affiliate of the UMG Defendants. Simply

put, the members of Trouble Funk had no rights in those recordings to convey to TufAmerica in

1999. Accordingly, TufAmerica lacks standing to bring any infringement claims related thereto.

Similarly, although the members of Trouble Funk may have retained some fractional

ownership interests in the copyrighted musical compositions that also form the basis for the

infringement claims asserted, the record evidence adduced demonstrates that defendant UMG-

Polygram is a co-owner of the copyrights in those same musical compositions. Therefore,

UMG-Polygram and its licensees are immune from TufAmericas claims here because it is

axiomatic that no claim for infringement can lie as between co-owners of a copyrighted work.



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In 1984, the members of Trouble Funk signed a series of agreements with a Washington,

D.C.-based concert promoter named Carl Maxx Kidd and Island (collectively, the Island

Agreements), which the members reaffirmed later that year and again in 1989 (the Termination

Agreement). Pursuant to these agreements, Island became the exclusive owner in and to the

copyrights of all Trouble Funk sound recordings delivered during the term of the agreements.

Moreover, the assignment provision in the initial Island Agreements is extremely broad,

including not only new recordings made during the term, but also all Trouble Funk recordings

that existed as of the date of the agreements. The recordings for Lets Get Small and Say

Whatthe two remaining recordings at issue hereindisputably existed as of the date of the

Island Agreements and, accordingly, were conveyed to Island decades ago pursuant to the Island

Agreements.1

At their depositions in this case, the surviving members of Trouble FunkMr. Avery

and Mr. Fisherfreely admitted that the Island Agreements and Termination Agreement were

valid, testifying that they had signed all of the agreements and were represented by counsel at all

relevant times related thereto. Further, both Mr. Fisher and Mr. Avery testified that they signed

the Termination Agreement in 1989, ratifying, once again, their initial assignment of all rights in

the Trouble Funk sound recordings to Island. Thus, Islands ownership of all rights in and to the

recordings at issue cannot reasonably be disputed.

With regard to the musical compositions of the tracks at issue, the members of Trouble

Funk assigned portions of their copyright interests in the musical compositions Lets Get

1Moreover, the track Say What was embodied on the album In Times of Trouble, which the

parties expressly agreed constituted the first master recording delivered to Island under theagreements and in satisfaction of Trouble Funks contractual recording commitment; thus

providing Island with a second independent basis of ownership of the recording.



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Small and Say What on the same day that they entered into the Island Agreements. As the

result of a series of subsequent corporate acquisitions and asset transfers, all of which were

recorded with the Copyright Office (and have been undisputed matters of public record for

decades as well), UMG-Polygram also currently holds an undivided ownership interest in both

compositions. As a matter of well-established Copyright Act jurisprudence, TufAmerica cannot

pursue an infringement action against a co-owner of such compositions or its licensees.

Since there remains no genuine issue of material fact concerning the ownership of the

recordings and compositions at issue, TufAmerica cannot maintain this action as a matter of law

and summary judgment should be entered in favor of the UMG Defendants.

STATEMENT OF FACTS

A. Trouble Funk

The musical group Trouble Funk was formed in the mid-1970s. (Local 56.1 Statement

(56.1) 1.) Its original members included Tony Fisher and Robert Reed. (56.1 2.) James

Avery joined the group in 1979. (56.1 3.) The members of the group never formed a separate

legal entity to manage or control their performances or their rights in sound recordings

containing their performances, but instead operated as a group of individual artists. (56.1 4-

5.) Indeed, the artists never entered into any formal written agreements that addressed their

relationship. (56.1 5.)

In or around 1982, the members of Trouble Funk formed a corporate entity to

manufacture their sound recordingsa record label called D.E.T.T. Records, Inc. (D.E.T.T.).

(56.1 7.) The members of Trouble Funk did not have any written agreement with or relating to

D.E.T.T. nor did they grant D.E.T.T. any ownership interests in the Trouble Funk recordings.

(56.1 8.) The members of Trouble Funk and their manager distributed the groups records to

local record stores themselves. (56.1 9.)



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In 1982 and 1983, Trouble Funk released the singles entitled Lets Get Small and Say

What under the D.E.T.T. label. (56.1 11, 13.) Mr. Reed, Mr. Avery, and Mr. Fisher were

the authors and performers credited on both Lets Get Small and Say What. (56.1 12,

16.) The recording Say What also appeared on the album In Times of Trouble, released by

Trouble Funk in 1983 also under the D.E.T.T. label moniker. (56.1 14.)

B. Trouble Funks Deal With Island

During the early 1980s, the members of Trouble Funk worked with an individual named

Carl Maxx Kidd in various capacities, including as a promoter and record producer. (56.1

10, 15.) In or around 1984, Mr. Kidd began shopping Trouble Funk to various major labels

hoping to land a record deal. (56.1 17.) It was Mr. Kidds desire to have Trouble Funk sign

with his company, T.T.E.D. Records, Inc. (T.T.E.D.) as a so-called furnishing company that

would, in turn, sign a deal with a major label to provide the services of Trouble Funk. (Id.)

Later that year, Mr. Kidd advised the members of Trouble Funk that Islanda major,

independent record label at the timewas willing to sign a deal with T.T.E.D. to provide the

recording services of Trouble Funk. (56.1 18.) Although Mr. Fisher was initially opposed to

such a deal and did not want Mr. Kidds company as an intermediary, at a meeting in New York

with Mr. Kidd and Chris Blackwell, the owner of Island, Mr. Blackwell made clear to the group

that Island was only interested in working with the group if they were furnished through

T.T.E.D. (56.1 19-20.) The members of the band, including Mr. Fisher, agreed to the deal.

(56.1 21.)

After the terms of the relationship were negotiated, the members of Trouble Funk,

T.T.E.D., and Island entered into three related agreements, all of which are dated as of October

11, 1984. (56.1 23.) First, Mr. Avery, Mr. Fisher, Mr. Reed, and Taylor Reed (Mr. Reeds

brother) signed an exclusive recording agreement (the Recording Agreement) with Mr. Kidds



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company T.T.E.D, giving T.T.E.D. the exclusive rights to the services and recordings of Trouble

Funk. (56.1 24.) Simultaneously, T.T.E.D. signed a Production Agreement with Island

promising to deliver sound recordings created by Trouble Funk (and other performers not

relevant here) under the Recording Agreement. (56.1 25.) Finally, to ensure the members of

Trouble Funks consent to, and compliance with, the Production Agreement, all of the band

members signed a so-called Letter of Inducement, acknowledging their review of both the

Recording Agreement and Production Agreement, and agreeing to be bound by each and every

provision of both. (56.1 43.) Significantly, the Production Agreement expressly provided that,

in the event of any inconsistency among the agreements, the terms of the Production Agreement

would prevail. (56.1 26.) The members of Trouble Funk were represented and advised by

separate counsel throughout this time period. (56.1 23.)

The express terms of the three agreements clearly and unambiguously prove that Island is

the owner of 100% of the copyright interests in all Trouble Funk recordings made before or

during the term of the Island Agreements, or otherwise delivered to Island. First, pursuant to the

terms of the Recording Agreement, T.T.E.D. became the owner of all master recordings

delivered pursuant to the Recording Agreement. (See56.1 27-33.) Further, the members of

Trouble Funk granted T.T.E.D. the exclusive right to copyright any such recordings. (56.1 31.)

Under this agreement, the members of Trouble Funk agreed to deliver at least two albums to

T.T.E.D. to satisfy their minimum recording commitment. (56.1 29.) The Recording

Agreement expressly acknowledged that the album In Times of Trouble already had been

accepted by Island as the first album in fulfillment of the band members minimum recording

commitment. (56.1 32.)



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Thereafter, in the Production Agreement, T.T.E.D., in turn, conveyed the ownership and

other rights in the Trouble Funk recordings to Island that were created under the Recording

Agreement. (See 56.1 34-38.) Further, Island obtained its rights in Trouble Funk recordings

that pre-dated the agreements both by virtue of their delivery under the Recording Agreement, as

well as pursuant to the express terms of the Production Agreement. (56.1 35-36.) Paragraph

3 of the Terms and Conditions, annexed to and forming part of the Production Agreement,

defined the recordings to which Island was being granted rights. (56.1 36.) Pursuant to

Paragraph 3, Island was granted both ownership of and the rights to exploit each and every

master recording featuring an Artist existing at the date hereof(except as expressly provided

otherwise herein) or recorded during the applicable Artist Term. (Id. (emphasis added).)

Paragraph 8 of the Terms and Conditions went on to define the rights assigned to Island to

include, among other rights, the exclusive right to copyright the recordings described in

Paragraph 3, as well as other rights, including the right to release and re-release all recordings

made hereunder in all forms and sizes of records as it may in its absolute discretion determine.

(56.1 35.)

There is no question that Trouble Funk was (and remains) bound by this express transfer

of the copyright interests in and to its sound recordings. As noted above, the Recording

Agreement expressly referenced the Production Agreement, and even varied certain of its terms

if the Production Agreement was modified, amended, or terminated. (56.1 33.) Moreover, Mr.

Avery, Mr. Fisher, Mr. Reed, and Taylor Reed all signed the Letter of Inducement, attached as

Exhibit A to the Production Agreement, whereby they: (1) acknowledged they had reviewed the

Production Agreement and understood its terms; (2) represented, warranted, and agreed that

T.T.E.D. had the right to enter into the Production Agreement and that T.T.E.D.s warranties and



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representations concerning Trouble Funk were true and correct; (3) agreed to comply with and be

bound by the terms of the Production Agreement; and (4) agreed that in the event of an

inconsistency between the Production Agreement and Recording Agreement, they would be

bound by the terms of the Production Agreement. (56.1 39-43.)

As further confirmation of the fact that the members of Trouble Funk were fully aware of

the Island Agreements, on December 10, 1984, Mr. Avery, Mr. Fisher, Mr. Reed, and Taylor

Reed signed an additional agreement directly with Island (the Letter of Direction). (56.1

44-47.) In this agreement, the members of Trouble Funk ratified the Recording Agreement and

Production Agreement, and directed Island to pay a proportionate share of the royalties due

under the agreements directly to the members of Trouble Funk, as opposed to T.T.E.D. or Mr.

Kidd. (Id.)

Taken together, the Island Agreements made Island the exclusive owner in and to the

copyrights in: (i) all Trouble Funk master recordings that existed as of October 11, 1984, (ii) any

recordings that were delivered to Island thereunder, and (iii) any others that were recorded

during the term of the Island Agreements. In particular, Island became the owner of and

exclusive copyright holder for the recordings Lets Get Small and Say What, both of which

existed as of October 11, 1984 and were delivered to Island.

Although Islands exclusive ownership is evident from the clear and unambiguous

language of the Production Agreement, granting Island rights to each and every master

recording featuring [Trouble Funk] existing at the date hereof, it is corroborated by the multiple,

subsequent releases of these recordings by Island. (See 56.1 48-60.) Indeed, the members of

Trouble Funk were fully aware, and never objected to any, of Islands re-releases of Trouble

Funk singles and albums pursuant to the Island Agreements, which included both new recordings



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and recordings that were made prior to October 11, 1984, such as Lets Get Small and Say

What. (56.1 48-49.) For example, Island released Lets Get Small as a single in 1985 and

registered a copyright in that single recording. (56.1 51-52.) It also released Lets Get

Small on a compilation album and on an EP. (56.1 53-54.) Importantly, Mr. Fisher admitted

at his deposition that the band did not record a new version of Lets Get Small for Island;

instead, the band delivered to Island the same recording that they had released as a single in

1982 under the D.E.T.T. label. (56.1 56.) Thus, there is no doubt that the very recording on

which TufAmerica bases its claims here was conveyed to Island in 1984.

Similarly, Island re-released the studio disc of the album In Times of Trouble that

contains the recording of Say What, and which Island had expressly accepted as the first album

delivered in satisfaction of the groups recording commitment under the Island Agreements.

(56.1 57.) Island also released the Say What recording on a compilation album. (56.1 58.)

Again, the band delivered to Island the same recording of Say What that previously had been

released. (56.1 59.)

The transfer of ownership of all Trouble Funk recordings was the primary consideration

to Island for its significant investment in the band. In addition to recording and marketing costs,

Island provided extensive economic support to the members of Trouble Funk, including by

paying for multiple international tours, producing a TV program featuring Trouble Funk,

providing a producer, arranging for studio time, providing musicians, featuring Trouble Funk in

a film about Go-Go music, and even flying the members of Trouble Funk to Mr. Blackwells

recording compound in Jamaica. (56.1 50.)

By 1989, the relationship between Island and the group had run its course. To confirm

the rights of the parties to all of Trouble Funks recorded output created prior to that time, Mr.



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Avery, Mr. Fisher, Mr. Reed, and Taylor Reed signed the Termination Agreement with Island.

(56.1 61-62.) Pursuant to the express terms of the Termination Agreement, the members of

Trouble Funk reaffirmed all of the previous grants of rightsin the Island Agreements, as well as

the representations and warranties contained therein. (56.1 62.)

C. Trouble Funks Composition Transfers

At some point in the early 1980s, Mr. Fisher, Mr. Avery, and Mr. Reed created a music

publishing company called Farr Music Company (Farr Music). (56.1 63.) On October 11,

1984, the same day as the Island Agreements, Mr. Avery and Mr. Reed signed an agreement on

behalf of Farr Music, assigning a portion of the musical composition copyrights for Lets Get

Small and Say What to Z-Kidd Music Company (Z-Kidd Music), a company affiliated with

Mr. Kidd. (56.1 64.) As Mr. Fisher testified, Mr. Reed was authorized to act with regard to the

business affairs on his behalf. (56.1 6.)

By agreement dated January 5, 1985 and recorded with the Copyright Office, Z-Kidd

Music2 transferred 50% of its previously-acquired interest in the copyrights in the musical

compositions Lets Get Small and Say What to Island Music, Inc. (Island Music.), a

company that was affiliated at the time with Island. (56.1 65.) The fact that ownership was

shared by Farr Music, Z-Kidd Music, and Island Music is reflected on the credits for the album

Go Go Crankin, which was released by Island in 1985, and lists these three same entities as

the music publishers for both Lets Get Small and Say What. (56.1 66.)

By agreement dated September 17, 1986, also recorded with the Copyright Office, Island

Music and Z-Kidd Music transferred to Ackee Music and Maxx Kidd Music, respectively, their

2The 1984 assignment involved Z-Kidd Music with Mr. Kidd signing on its behalf. Although

the 1985 assignment referred to Zee-Kidd Music, the company appears to be the same as Z-Kidd Music, as it is described as a division of T.T.E.D. Records, Inc., which was also Mr.

Kidds company.



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entire combined interests in the Lets Get Small and Say What composition copyrights.

(56.1 67.)

By agreement dated July 1, 1992, recorded with the Copyright Office, Ackee Music then

assigned its entire interest in the composition copyrights for Lets Get Small and Say What

to Polygram International Publishing, Inc (Polygram). (56.1 68.) Through this series of

transfers and assignments, UMG-Polygrama defendant in this action and successor

corporation to Polygram (56.1 69)is, therefore, a co-owner of the composition copyrights for

Lets Get Small and Say What.

D. Robert Reed and Tony Fishers Deal With TufAmerica

In or around 1999, TufAmerica approached certain members of Trouble Funk, proposing

a deal whereby TufAmerica would negotiate licenses for, and bring infringement actions against,

parties that were allegedly using or exploiting Trouble Funk compositions and sound recordings

without authorization in exchange for a substantial percentage of the revenues generated

therefrom. (56.1 71.) On or around December 23, 1999, TufAmerica entered into two

exclusive administration agreements with Mr. Reed and Mr. Fisher; one agreement governing

master recordings (the Master Administration Agreement) and the other governing

compositions (the Composition Administration Agreement, together with the Master

Administration Agreement, the 1999 TufAmerica Agreements). (56.1 72-73.)

Mr. Reed and Mr. Fisher were represented and advised by counsel in connection with the

1999 TufAmerica Agreements. (56.1 74.) In the agreements, Mr. Fisher and Mr. Reed

represented that they owned or were the sole controller of the master recordings and

compositions created before 1990, including but not limited to those listed in Schedule A.

(56.1 75.) Notably, the 1999 TufAmerica Agreements expressly reference the Island

Agreements, thus putting TufAmerica on notice that Island had rights in certain Trouble Funk



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recordings. (56.1 79.) The Master Administration Agreement and Composition

Administration Agreement purport to govern the same 60 Trouble Funk songs, as listed in the

attached Schedule A to each agreement. (56.1 76.) Mr. Reed and Mr. Fisher then purported to

sell, assign, transfer, and set over to TufAmerica the exclusive right to administer all of

Troubles rights in both the master recordings and compositions. (56.1 77-78.)

Given the express reference to the groups deal with Island, Schedule A includes many

songs that should not have been included, as Mr. Fisher himself admitted. (56.1 81.) Among

many other recordings and compositions that were erroneously included, Schedule A for both

agreements includes Say What and Lets Get Small. (56.1 82.) At the time Mr. Reed and

Mr. Fisher entered into the 1999 TufAmerica Agreements, they no longer had any ownership

interests in the copyrights to the recordings Say What and Lets Get Small, nor were they the

sole controller of those compositions.3

E. James Averys Deal With TufAmerica

TufAmerica entered into a separate agreement with Mr. Avery on January 1, 2012 (2012

Avery-TufAmerica Agreement). (56.1 87.) The 2012 Avery-TufAmerica Agreement does

not specify the songs or copyrights it purports to govern. (56.1 89.) However, Mr. Avery

purported to grant TufAmerica an exclusive license to sue and recover on all accrued and future

causes of action in connection with all of the Trouble Funk Copyrights, in order to provide

TufAmerica with standing. (56.1 88.) As with Mr. Reed and Mr. Fisher, however, Mr.

Avery was no longer the owner of the recordings for Lets Get Small and Say What, nor was

he a sole controller of those compositions.

3While Mr. Avery was a composer and performer on both tracks, he never signed the 1999TufAmerica Agreements, nor did Mr. Reed or Mr. Fisher have Averys authorization to enter

into the agreements on his behalf. (56.1 84-86.)



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F. TufAmericas Remaining Claims

TufAmerica brought this action alleging that it is the exclusive administrator and licensee

of certain master recordings and compositions written and performed by members of the musical

group Trouble Funk. (56.1 90-91.) In the Amended Complaint, TufAmerica asserted six

claims of copyright infringement based on four Trouble Funk songs. (56.1 92.) In ruling on

Defendants Motion to Dismiss, the Court dismissed four of the claims, allowing Claims 1 and 5

to proceed. (56.1 93.) Claim 1 is premised on the recording and composition for the Trouble

Funk song Say What as allegedly sampled in the Beastie Boys song Shadrach. (Id.) Claim

5 is premised on the recording and composition for the Trouble Funk song Lets Get Small as

allegedly sampled in the Beastie Boys song Hold It Now Hit It. (Id.)

ARGUMENT

The court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed.

R. Civ. P. 56(a). Once the movant has made an initial showing that there is no genuine issue of

material fact, the non-movant cannot rely on the mere existence of a scintilla of evidence to

defeat summary judgment but must set forth specific facts showing there is a genuine issue for

trial. McDonald v. Brown, No. 12 Civ. 7109(WHP), 2014 WL 116003, at *2 (S.D.N.Y. Jan.

13, 2014) (emphasis in original) (quotingMatsushita Elec. Co. v. Zenith Radio Corp., 475 U.S.

574, 587 (1986)) (internal quotation marks omitted). Where the record taken as a whole could

not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for

trial. McDonald, 2014 WL 116003, at *2 (quoting Scott v. Harris, 550 U.S. 372, 380 (2007))

(internal quotation marks omitted).



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I. TUFAMERICA HAS NO STANDING TO BRING THIS ACTION.

A. Legal Standards

The Copyright Act provides that only the legal or beneficial owner of an exclusive right

under a copyright has standing to pursue an infringement action. See 17 U.S.C. 501(b). As

explained by the Second Circuit, this provision means that only (1) owners of copyrights and

(2) persons who have been granted exclusive licenses by owners of copyrights have standing to

sue for copyright infringement. Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 32

(2d Cir. 1982) (emphasis added).

An assignor of a copyright has no standing to sue for acts of infringement which

occurred after execution of the assignment. Contractual Obligation Productions, LLC v. AMC

Networks, Inc., No. 04 Civ. 2867(BSJ)(HBP), 2006 WL 6217754, at *4-5 (S.D.N.Y. Mar. 31,

2006) (quoting Skor-Mor Prods., Inc. v. Sears, Roebuck & Co., 81 Civ. 1286-CSH, 1982 WL

1264, at *3 (S.D.N.Y. May 12, 1982)). Where a plaintiff has conveyed its ownership of

copyrights to another party, plaintiff does not have standing to bring a claim for copyright

infringement because plaintiff was not the owner of the work when the alleged copyright

infringement took place. Contractual Obligations, 2006 WL 6217754, at *5.

B. Island Indisputably Owns the Lets Get Small and Say What Recordings

The uncontroverted evidence establishes that Island is the owner of all rights in and to the

copyrights of the remaining two sound recordings at issue. During the negotiation of the Island

Agreements, Island made clear to the members of Trouble Funk that Island was not going to

contract directly with them and that they therefore needed to sign with T.T.E.D. if they wanted to

enter the Island Agreements. (56.1 19-20.) Accordingly, Mr. Avery, Mr. Fisher, and Mr.

Reed signed the Recording Agreement, making T.T.E.D. the owner of the master recordings



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delivered thereunder, and granting T.T.E.D. the exclusive right to copyright such recordings.

(56.1 24, 27-33.)

In turn, T.T.E.D. entered into the Production Agreement with Island, which granted

Island ownership of all Trouble Funk master recordings, and gave Island the exclusive right to

copyright any such recordings. (56.1 25, 34-38.) The Production Agreement made clear that

Island became the owner not just of the new recordings made during the term of the agreement,

but also of each and every master recording featuring an Artist existing at the date hereof. . . .

(56.1 35-36 (emphasis added).)

Mr. Avery, Mr. Fisher, and Mr. Reed ratified this grant by executing the Letter of

Inducement and agreeing, among other things, to be bound by the terms of the Production

Agreement and that in the event of an inconsistency with the Recording Agreement, the

Production Agreement would control. (56.1 26, 39-43.)

Two months later, Mr. Avery, Mr. Reed, and Mr. Fisher signed the Letter of Direction,

further ratifying the Island Agreements, and directing Island to pay royalties to the band

members directly, instead of through T.T.E.D. (56.1 44-47.)

When the parties agreed to end their relationship in 1989, Mr. Avery, Mr. Reed, and Mr.

Fisher again confirmed Islands previously-acquired ownership rights in the Trouble Funk

recordings, and further agreed that all of Islands rights would survive the termination of the term

of the Island Agreements. (56.1 61-62.)

In depositions, Mr. Avery and Mr. Fisher confirmed that they entered into the Island

Agreements and Termination Agreement, and that their signatures appear on the Recording

Agreement, Letter of Inducement, Letter of Direction, and Termination Agreement. (56.1 22,



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24-26, 39, 45, 48-50, 61.) Mr. Avery and Mr. Fisher testified that they were represented and

advised by counsel throughout these negotiations. (56.1 23.)

Mr. Avery and Mr. Fisher also confirmed that, pursuant to the grant of rights in the Island

Agreements, Island released numerous Trouble Funk recordingsincluding songs that had been

recorded prior to the date of the Island Agreementsand that the members never objected to any

of Islands releases of Trouble Funk recordings. (56.1 48-49.) Indeed, the members of

Trouble Funk received valuable support from Island during this period, including support for

multiple international tours and were even featured in a movie and TV program. (56.1 50.)

Mr. Fisher also confirmed that the band expressly delivered to Island the recordings of Lets

Get Small and Say What, since the Island recordings are the same recordings that were

released by D.E.T.T. in 1982 and 1983 (56.1 56, 59.)4

Thus, the evidence in the record establishes what was clear from the language of the

Island Agreements: that the parties intended for Island to become the exclusive owner of existing

Trouble Funk recordings in addition to those recordings created during the term of the Island

Agreements. Island became the owner of the Lets Get Small and Say What recordings

under the Recording Agreement, as those recordings were delivered to Island thereunder, as well

as the Production Agreement, since those recordings existed as of October 11, 1984. Island

became the owner of Say What for the additional reason that it appeared on the album In

4This fact has also been further corroborated by TufAmerica in this action. In its requests foradmission, signed by counsel, TufAmerica defined the recording at issue for Lets Get Small

as embodied on both the 1982 D.E.T.T. single andan EP released by Island in 1985. (56.1 55.)

Similarly, TufAmerica defined Say What as embodied on both the 1983 D.E.T.T. single and

the In Times of Trouble album, which was delivered to and re-released by Island. (56.1 60.)Thus, TufAmerica has admitted that Island released the same recordings of Lets Get Small

and Say What that D.E.T.T. released.



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Times of Trouble which was a delivered product under the Recording Agreement and

Production Agreement.

TufAmerica has no colorable retort. The fact that the band previously released Lets

Get Small and Say What in 1982 and 1983, respectively, on its own label does not alter the

clear and unambiguous conveyance of all ownership rights in those recordings set forth in the

Island Agreements, and confirmed by the Termination Agreement. The fact that the band

members submitted copyright applications for these tracks also has no relevance. First, the 1983

registration for Lets Get Small predates the Island Agreements. Thus any ownership rights

were transferred to Island in those later agreements. The 1985 registration for In Times of

Trouble is manifestly baseless since Mr. Avery, Mr. Reed, and Mr. Fisher had no ownership

interests in that recording in 1985, having granted Island the exclusive right to copyright that

album in the Island Agreements.

Counsel for TufAmerica intimated at the April 25, 2014 status conference that Trouble

Funks existing recordings were somehow carved out of the Island Agreements pursuant to

Paragraph 1.05 of the Recording Agreement. However, such an argument cannot be squared

with the actual language of that provision which reads: Only Master Recordings consisting of

Compositions not previously recorded by the Artist shall apply in reduction of the Recording

Commitment, except as otherwise provided herein. (56.1 30 (emphasis supplied).)

Manifestly, this provision does not address ownership of recordings but rather addresses

the satisfaction of the groups minimum recording commitment. (See 56.1 29-30.) The

ownership of recordings and a bands obligation to make further recordings are two wholly

unrelated concepts. Moreover, even if this provision somehow excluded existing recordings

from the deal, which it does not, the Recording Agreement would then contradict the express



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term in the Production Agreement that gave Island ownership of each and every master

recording featuring an Artist existing at the date hereof . . . . (56.1 35-36 (emphasis

added).) Mr. Avery, Mr. Fisher, and Mr. Reed all agreed that they would comply with and be

bound by the terms of the Production Agreement. (56.1 40.) Critically, they further agreed

that in the event of an inconsistency, the terms of the Production Agreement would control.

(56.1 43.) In the Termination Agreement, Mr. Avery, Mr. Fisher, and Mr. Reed expressly

reaffirmed the grant of rights in the Production Agreement. (56.1 62.)

In sum, TufAmerica cannot raise any genuine issue of material fact that could preclude

entry of summary judgment. The clear and unambiguous terms of the Island Agreements and

Termination Agreement confirm that Island is the exclusive owner of the recordings at issue, a

fact that has only been corroborated and strengthened by deposition testimony. Moreover, the

express reference to the Island Agreements in the 1999 TufAmerica Agreements demonstrates

that TufAmerica was on notice of the groups deal with Island, but failed to perform the

necessary due diligence to determine whether it had valid rights in any the recordings at issue

before bringing suit. In fact, TufAmerica performed that simple task of checking to see which

recordings had been released previously by Island only a few weeks ago, and only after the

UMG Defendants urged TufAmerica to withdraw its claims once these dispositive agreements

were discovered. (56.1 80.)

Since Island became the owner of the Lets Get Small and Say What recordings in

1984, Mr. Reed and Mr. Fisher had no ability to convey any rights to TufAmerica in 1999, let

alone exclusive rights sufficient to confer standing under the Copyright Act. Therefore,



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TufAmerica lacks standing to pursue its infringement claims based on these recordings.5

Newsome v. Brown, 209 F. Appx 11, 13 (2d Cir. 2008) (holding plaintiff lacked standing to

assert an infringement claim where plaintiff had assigned copyright interest to a third party);

Contractual Obligations, 2006 WL 6217754, at *5 (holding plaintiff had no standing where clear

and unambiguous terms of agreement indicated a third party had become the owner of the work

at issue);Poindexter v. EMI Record Group Inc., No. 11 Civ. 559(LTS)(JLC), 2012 WL 1027639,

at *3 (S.D.N.Y. Mar. 27, 2012) (holding plaintiff lacked standing in sampling infringement

action where agreement conveyed plaintiffs ownership rights to a third-party record company).

II. TUFAMERICA CANNOT MAINTAIN ITS COMPOSITION INFRINGEMENTCLAIMS.

A. Legal Standard

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. Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984);see also Robinson v. Double

R Records, No. 04 Civ. 4120(KMW), 2007 WL 2049724, at *2 (S.D.N.Y. July 16, 2007)

(imposing Rule 11 sanctions on plaintiff for pursuing infringement claim against co-owner).

B. UMG-Polygram is a Co-Owner of Copyrights in the Compositions Lets

Get Small and Say What

The uncontroverted evidence establishes that UMG-Polygrama defendant in this

actionis a co-owner of the compositions for Lets Get Small and Say What.

5For these same reasons, James Avery had no ownership rights in the Lets Get Small and

Say What recordings to transfer to TufAmerica when he signed the 2012 Avery-TufAmericaAgreement. Even ignoring Islands uncontroverted ownership, the 2012 Avery-TufAmerica

Agreement fails to provide sufficient standing to TufAmerica since an agreement [that]

transfers nothing more than a bare right to sue . . . cannot be the basis for standing under the

Copyright Act. John Wiley & Sons, Inc. v. DRK Photo, --- F. Supp. 2d ---, No. 11 Civ.5454(KPF), 2014 WL 684829, *14 (S.D.N.Y. Feb. 21, 2014) (internal quotation marks and

citation omitted).



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On October 11, 1984, the same day that the parties entered into the Island Agreements,

Mr. Avery and Mr. Reed, acting on behalf of the bands music publishing entity, Farr Music,

assigned a portion of the musical composition copyrights for Lets Get Small and Say What

to Z-Kidd Music, a company run by Mr. Kidd. (56.1 64.) A few months thereafter, on January

5, 1985, Z-Kidd Music transferred 50% of its interest in the compositions for Lets Get Small

and Say What to Island Music. (56.1 65.) This co-ownership is reflected on a compilation

album released by Island, that includes Lets Get Small and Say What, and that lists Island

Music, Z-Kidd Music, and Farr Music as the publishers for the compositions.6 (56.1 66.) On

September 17, 1986, Island Music and Z-Kidd Music transferred their entire combined interests

in the compositions at issue to their respective related entities, Ackee Music and Maxx Kidd

Music. (56.1 67.) Finally, on June 30, 1992, pursuant to a separate corporate acquisition,

Ackee Music assigned its interest in the composition copyrights for Lets Get Small and Say

What to Polygram International Publishing, Inc. (56.1 68.) Polygram International

Publishing, Inc. is the predecessor corporation to UMG-Polygram, the defendant music publisher

in this action. (56.1 69.)

This uncontroverted evidence establishes conclusively that UMG-Polygram became a co-

owner of the compositions at issue as early as 1992years before Mr. Reed and Mr. Fisher

purported to convey exclusive administration and licensee rights to TufAmerica in 1999.

Summary judgment should therefore be entered in favor of the UMG Defendants since

TufAmerica cannot pursue an infringement action against a co-owner of the copyrighted works

at issue. See Cafferty v. Scotti Bros. Records, Inc., 969 F. Supp. 193, 199 (S.D.N.Y. 1997)

6Mr. Fisher also confirmed that he does not receive a portion of the publishers share of

compositions that he wrote. (56.1 70.)



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(granting summary judgment and holding that defendant had been made co-owner of copyrights

at issue by prior agreements and could not be sued for infringement); Werbungs Und Commerz

Union Austalt v. LeShufy, No. 84 Civ. 7393(PNL), 1987 WL 33618, at *2-3 (S.D.N.Y. Dec. 24,

1987) (same).

CONCLUSION

For the reasons set forth above, the UMG Defendants respectfully submit that summary

judgment should be entered in their favor. First, Island owns the recordings at issue and

TufAmerica has no standing to pursue its infringement claims on those recordings. Second,

UMG-Polygram is a co-owner of the compositions at issue and neither it nor its licensees can be

sued for infringement.

Dated: New York, New York

June 9, 2014

JENNER & BLOCK LLP

/s Andrew H. BartAndrew H. Bart

Nathaniel H. Benforado

919 Third AvenueNew York, New York 10022-3908

(212) 891-1645

Attorneys for Defendants Universal

Polygram International Publishing, Inc.

and Capitol Records, LLC


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