Scorpio Music S.A. et al v. Willis, No. 3:2011cv01557 - Document 92 (S.D. Cal. 2013)
Court Description: ORDER Denying 80 Motion for Partial Summary Judgment Without Prejudice. Signed by Judge Barry Ted Moskowitz on 12/26/2013. (All non-registered users served via U.S. Mail Service)(rlu)(jrd)
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Scorpio Music S.A. et al v. Willis Doc. 92 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 SCORPIO MUSIC (BLACK SCORPIO) S.A. and CAN’T STOP PRODUCTIONS, INC., 13 Case No. 11cv1557 BTM(RBB) ORDER DENYING MOTION FOR PARTIAL SUMMARY JUDGMENT Plaintiffs, v. 14 15 VICTOR WILLIS, Defendant. 16 17 VICTOR WILLIS, Counterclaimant, 18 v. 19 20 21 SCORPIO MUSIC (BLACK SCORPIO) S.A. and CAN’T STOP PRODUCTIONS, INC., Counterclaim-Defendants, 22 23 24 25 -andHENRI BELOLO, Additional Counterclaim-Defendant. 26 27 28 1 11CV1557 BTM(RBB) Dockets.Justia.com 1 Plaintiffs-Counterdefendants Scorpio Music (Black Scorpio) S.A. and Can’t Stop 2 Productions, Inc. (“Plaintiffs”) have filed a motion for partial summary judgment. For the 3 reasons discussed below, Plaintiffs’ motion is DENIED. 4 5 I. PROCEDURAL BACKGROUND 6 Defendant Victor Willis (“Willis”) is the original lead singer of the Village People. 7 Plaintiff Scorpio Music S.A. (“Scorpio”) is a French corporation engaged in the business of 8 publishing and otherwise commercially exploiting musical compositions. Plaintiff Can’t Stop 9 Productions, Inc. (“Can’t Stop”) is the exclusive sub-publisher and administrator in the United 10 States of musical compositions published and owned by Scorpio. Plaintiffs allege that 11 between 1977 and 1979, they hired Willis to translate the lyrics of and/or create new lyrics 12 for certain musical compositions which were owned and published in France by Scorpio. 13 Copyright registrations for the 33 musical compositions (‘Compositions”) at issue, including 14 the hit song “Y.M.C.A.,” credit Willis as being one of several writers. By way of Adaptation 15 Agreements, Willis transferred his copyright interests in the subject Compositions to Can’t 16 Stop. Can’t Stop thereupon assigned to Scorpio its rights in the lyrics. 17 18 In January 2011, Willis served on Plaintiffs a notice of termination of his grants of copyright with respect to the Compositions. (Ex. A to FAC). 19 On July 14, 2011, Plaintiffs commenced this lawsuit. In their original complaint, 20 Plaintiffs challenged the validity of the notice of termination and sought a judgment declaring 21 that Willis has no right, title, or interest in the copyrights to the Compositions, requiring Willis 22 to withdraw the notice of termination, and enjoining Willis from making any claims to the 23 Compositions’ copyrights. 24 In an order filed on May 5, 2012, the Court granted Willis’s motion to dismiss. The 25 Court held that, contrary to Plaintiffs’ contention, Willis could unilaterally terminate his grants 26 under 17 U.S.C. § 203, because Willis granted his copyright interests in the Compositions 27 separately from the other co-authors. However, the Court granted Plaintiffs leave to amend 28 their complaint to seek declaratory relief regarding what percentage of copyright interest 2 11CV1557 BTM(RBB) 1 Willis was entitled to receive back upon termination. 2 On June 5, 2012, Plaintiffs filed their First Amended Complaint, seeking a judicial 3 determination regarding the percentage of interest in the copyrights at issue that Willis can 4 recover upon termination. Plaintiffs contend that the correct measure of Willis’s interest 5 should be equal to the percentage Willis received in direct payments from BMI, a not-for- 6 profit rights society which remits royalties directly to writers and publishers, or, at most, 7 33.3% (representing an equal share if there are 3 authors). 8 On August 1, 2012, Willis filed a Counterclaim. In his Counterclaim for Declaratory 9 Relief, Willis claims that Henri Belolo did not contribute to the authorship of the lyrics or the 10 music of 24 of the Compositions (“24 Disputed Works”) (Willis does not dispute that Morali 11 composed the music).1 Willis claims that he is entitled to a declaratory judgment that the 12 notice of termination is valid, that he is a 50% owner of the copyrights to the 24 works, and 13 that he is therefore entitled to recapture 50% of the copyright interests in each the works. 14 On September 17, 2012, Plaintiffs filed a motion to dismiss Willis’s Counterclaim on 15 the ground that it was barred by the three-year statute of limitations set forth in 17 U.S.C. § 16 507(b), as well as the doctrine of laches. In an order filed on March 4, 2013, the Court 17 denied Plaintiffs’ motion to dismiss. The Court found that there were triable issues of fact 18 regarding when Willis’s claim to 50% ownership of the copyrights to the 24 Disputed Works 19 was plainly and expressly repudiated. 20 On March 29, 2013, Plaintiffs filed a motion for partial summary judgment on Willis’s 21 Counterclaim, again arguing that Willis’s claim was barred by the statute of limitations. The 22 Court held that the evidence submitted by Plaintiffs was not enough to establish a “plain and 23 express repudiation” of Willis’s claim of 50% ownership. The Court denied the motion for 24 partial summary judgment without prejudice and instructed Plaintiffs that they were not to file 25 a new motion for partial summary judgment until Willis had a sufficient opportunity to conduct 26 discovery. 27 28 1 The other 9 songs were recorded by Patrick Juvet, who also composed the music. Henri Belolo does not claim to be a co-author of these 9 works. 3 11CV1557 BTM(RBB) 1 2 II. DISCUSSION Now that discovery has closed, Plaintiffs again seek partial summary judgment on 3 Willis’s counterclaim. Plaintiffs contend that Willis’s claim to 50% ownership of the 4 copyrights to the 24 Disputed Works is barred by the three-year statute of limitations as well 5 as the doctrine of laches. As discussed below, the Court finds that there are triable issues 6 of fact that preclude summary judgment with respect to the statute of limitations. As for 7 Plaintiffs’ laches argument, the Court denies the motion without prejudice to refiling after the 8 Supreme Court issues a decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946 9 (2012), cert. granted, 134 S. Ct. 50 (2013). 10 11 A. Statute of Limitations 12 Under 17 U.S.C. § 507(b), “No civil action shall be maintained under the provisions 13 of this title unless it is commenced within three years after the claim accrued.” As discussed 14 in the Court’s prior orders, under Ninth Circuit law, “claims of co-ownership, as distinct from 15 claims of infringement, accrue when plain and express repudiation of co-ownership is 16 communicated to the claimant, and are barred three years from the time of repudiation.” 17 Zuill v. Shanahan, 80 F.3d 1366, 1369 (9th Cir. 1996). 18 ownership of a copyright with a tenancy in common in real property, where “[a]n express or 19 implicit ouster of a cotenant by an unequivocal act of ownership starts the adverse 20 possession statute of limitations running.” Id. at 1370. The Ninth Circuit compared co- 21 The Court has considered the evidence submitted by Plaintiffs and concludes that 22 there are triable issues of fact regarding when Plaintiff knew he had a claim for 50% 23 ownership of the copyrights to the 24 Disputed Work and when such claim was expressly 24 repudiated by Belolo. Plaintiffs argue that express repudiation of Willis’s claim occurred at 25 the time the albums were released (1978-1980) because Willis admitted during his 26 deposition that when each of the albums came out, he saw that Belolo was credited as a 27 writer along with Morali and Willis. (Willis Dep. (attached to Besser Decl.) at 23:9-24:8.) 28 However, Willis arguably did not know he even had a claim to 50% ownership until much 4 11CV1557 BTM(RBB) 1 later, meaning there was no claim to repudiate at the time the albums were released. 2 According to Willis, he was the sole author of the lyrics to the 24 Disputed Works. 3 (Willis Decl. ¶ 2.) He did not know exactly what Belolo’s contribution to the works was 4 because Belolo was not present when Willis, Morali, and Wilkie, a keyboard player, had 5 writing sessions at a music studio. (Willis Dep. at 11:3-24.) Willis claims that he assumed 6 that Belolo contributed to the creation of the musical elements of the 24 Disputed Works, or 7 that Belolo and Morali, who did business together, agreed that Belolo would receive credit 8 for the musical elements of the compositions. (Willis Decl. ¶ 5.) Willis’s Declaration is 9 consistent with his deposition testimony in which he explained: 10 11 12 I didn’t know what he was taking credit for. I just knew that his name was being credited as a writer and there was nothing that was given to me or shown me the breakdown to say that – that he was taking credit for doing – doing words and music. I just assumed that it had to be that he and Jacques had did some music together because they were friends, business partners, and roommates. I knew it didn’t have anything to do with my writing and lyrics. 13 (Willis Dep. at 23:24-24:8.) 14 Assuming the truth of Willis’s testimony, although Willis did not really know how Belolo 15 contributed to the works, he assumed that Belolo was being credited in connection with the 16 musical arrangement and accepted that he was one of three authors. Willis did not know 17 that Belolo allegedly did nothing in connection with the creation of the works (and therefore 18 had no valid authorship claim) until Belolo told Willis that he took credit for writing French 19 lyrics to the songs, not for contributing to the musical arrangement. According to Willis, he 20 did not know that Belolo was taking credit for lyrics until 2009, when Belolo’s attorneys wrote 21 a letter stating that the lyrics for “Macho Man,” “YMCA,” “In the Navy,” and “Go West,” were 22 originally written in French by Belolo. (Ex. 2 to Willis Decl.) 23 Plaintiffs argue that Willis actually knew about Belolo’s claim to have written original 24 French lyrics by 1989. Plaintiffs rely on a letter dated June 29, 1989, from Belolo to Willis’s 25 attorney, Mr. Michael Leff, in which Belolo states that he was a “co-writer with Mr. J. Morali 26 of a certain quantity of songs published by SCORPIO MUSIC, Mr. V. Willis was the English 27 adaptor of some of them.” (Ex. C to Belolo Decl.) Willis claims that he never saw this letter. 28 (Willis Dec. ¶ 11). Plaintiffs counter that since Leff was acting as Willis’s agent, his 5 11CV1557 BTM(RBB) 1 knowledge should be imputed to Willis. It is true that a client is deemed to have knowledge 2 of information that his attorney acquired within the scope of his representation and ought to 3 have communicated to his client in the exercise of ordinary care and diligence. See Cal. Civ. 4 Code § 2332; Freeman v. Superior Court, 44 Cal. 2d 533, 538 (1955). Here, however, the 5 Court cannot say that Leff had a duty to convey the remark quoted above to Willis. Although 6 the letter implies that Belolo or Morali wrote French lyrics to some unspecified songs, it does 7 not expressly state so. 8 overlooked because the context of the letter was a dispute regarding exploitation of the 9 works in France and monies due to Willis, not copyright ownership. The remark was made 10 as part of Belolo’s protestations that he was just a co-author, not Willis’s manager or advisor, 11 and that Willis’s complaints should be directed toward Can’t Stop, with whom Willis had 12 contracted. Accordingly, the Court will not grant summary judgment on the basis of this stray 13 remark. Moreover, the import of the remark could have been easily 14 Plaintiffs also rely on Willis’s deposition testimony regarding a telephone conversation 15 he had with Morali in 1989. According to Willis, during the conversation, Morali stated that 16 he was getting ready to sue Belolo and wanted Willis to join him. (Willis Dep. at 20:17-18.) 17 Morali also stated that Belolo was a “crook” and a “fraud” and that he regretted allowing 18 Belolo to be credited as a creator of the songs. (Willis Dep. at 20:19-23; 22:15-19.) Willis 19 stated: 20 21 22 23 [W]hat Jacques basically was saying to me was that whatever it was, this is the first time I had any idea that – that I had been affected, per se, by his name being on there and that I would be getting back – probably getting back whatever I was due from whatever it was that had been taken from me when – from Mr. Belolo’s name being on there. (Willis Dep. at 38:11-18.) 24 During oral argument, Plaintiffs’ counsel also pointed to portions of the deposition 25 where Willis made remarks to the effect that Willis knew that Belolo had nothing to do with 26 the creation of the songs and that the songs were created by just himself and Morali. For 27 example, Willis said, “I told Mr. Morali that, yes, I would – I would join on because I knew that 28 Mr. Belolo had nothing to do with the creating of the songs because he was never there 6 11CV1557 BTM(RBB) 1 when Jacques and I did it.” (Willis dep. 22-23-23:1.) He also testified: “I didn’t assume 2 anything as far as what Mr Belolo had done with the songs. I knew Mr. Belolo hadn’t done 3 anything as far as the creation of the songs. So I was confused about why his name was 4 even on there, but I didn’t – I didn’t – I didn’t inquire.” (Willis dep. 32:4-8.) 5 Although Willis’s deposition testimony can be viewed as showing that Willis knew 6 that Belolo did not contribute to creation of the works and therefore had no valid claim to 7 copyright ownership, an argument can be made for a different interpretation. Willis may 8 have been injecting his current feelings of certainty regarding the illegitimacy of Belolo’s 9 claim to authorship into some of his testimony regarding his past thoughts and actions. At 10 other times during the deposition, Willis said that he knew that Belolo was not present when 11 he and Morali were putting together the songs, so he was “confused” about why Belolo was 12 credited, and assumed that Morali and Belolo had worked on the music together and/or 13 Morali had agreed to give him music writing credit. (Willis dep. at 23:9-18; 23:24-24:8; 14 35:24-36:12). 15 According to Willis, during the 1989 telephone conversation, Morali confirmed to Willis 16 that he had agreed to let Belolo be credited. (Willis Dep. 23:16-19.) However, an agreement 17 that Belolo could receive credit does not mean that Belolo did not actually contribute in some 18 way to the music. Because it is not always clear whether a contribution is significant enough 19 to render the contributor an author, contributors to a work may enter into an agreement 20 regarding who will be credited as authors. Willis did not testify that Morali said that Belolo 21 made no contribution to the music, just that he regretted allowing him to be credited.2 22 Morali’s comments about Belolo being a “crook” and a “fraud” do not appear to relate 23 to Belolo being credited in connection with the works, but, rather, with Belolo’s alleged failure 24 to compensate Morali and Willis for exploitation of the works in France. Morali’s lawsuit 25 alleged that Belolo failed to obtain his consent and failed to compensate him in connection 26 2 27 28 At one point in his deposition, Willis stated that Morali “regretted that he had ever let him take credit for – for– on the songs as being one of the creators of the works that he and I had done solely together.” (Willis Dep. 20:6-9.) Arguably, the “solely together” remark is Willis’s present day commentary regarding the creation of the compositions, not what Morali himself said in 1989. 7 11CV1557 BTM(RBB) 1 with the release of a “Best of” album in France, which included re-mixed versions of the 2 original Village People Recordings. (Willis Decl. ¶ 13.) Willis’s French lawsuit alleged 3 violation of his rights of publicity and misappropriation of his voice and image in connection 4 with promotional music videos for the “Best of” album, which used a different singer lip- 5 syncing to Willis’s recordings. (Id.; Ex. E to Belolo Decl.) Neither lawsuit concerned whether 6 Belolo was actually an author and owner of copyright. 7 When Willis stated that after he talked to Jacques, he realized for the first time that 8 he had been “affected, per se, by his name being on there,” and that through the lawsuit, he 9 would be getting back whatever it was that was taken from him, Willis was not necessarily 10 talking about copyright ownership. Willis could have meant that as a credited author, Belolo 11 felt like he could do whatever he wanted with the works without answering to Willis or Morali. 12 As already discussed, Willis’s lawsuit in fact concerned Willis’s publicity rights and use of his 13 voice and image. 14 Willis’s deposition testimony is not so compelling that no reasonable trier of fact could 15 find other than that Willis knew of his claim to 50% copyright ownership in 1989. 16 Furthermore, even assuming that Willis knew that he had a claim to 50% ownership in 1989, 17 it is unclear from the record if, how, and/or when express repudiation of the claim took place. 18 Plaintiffs introduce evidence that Willis was aware, prior to 2009, that Belolo was 19 openly taking credit for the lyrics. However, this evidence is contradicted by Willis. For 20 example, Belolo attaches to his declaration a 2001 email allegedly from Willis in which Willis 21 states: “Also I enjoyed reading your interview on the internet, the one where you told you had 22 written the lyrics on the songs asking me mildly for help in correcting some of your grammar. 23 Very enlightening!” (Ex. J to Belolo Decl.) Willis denies writing or sending this email and 24 claims he never had an email account with that email address. (Willis Decl. ¶ 16.) Belolo 25 also claims that in 2006, during the course of an interview, he explained to Karen Huff the 26 song-writing process for the Village People songs and how he and Morali wrote the songs, 27 to which Willis subsequently provided English lyrics. (Belolo Decl. ¶ 29.) In 2007, Ms. Huff 28 married Willis. (Belolo Decl. ¶ 30.) Mrs. Willis (Huff) states in a declaration that Belolo did 8 11CV1557 BTM(RBB) 1 not talk to her about the writing of the songs recorded by the Village People. (K. Willis Decl. 2 ¶ 2.) 3 In sum, there are triable issues of material fact with respect to whether, more than 4 three years prior to the commencement of this suit, Belolo plainly and expressly repudiated 5 a claim by Willis to 50% ownership of the copyright interests in the 24 Disputed Works. 6 Accordingly, Plaintiffs are not entitled to summary judgment based on the statute of 7 limitations. 8 9 B. Laches 10 In addition to arguing that the counterclaim is barred by the three-year statute of 11 limitations, Plaintiffs also argue that the counterclaim is barred by the equitable doctrine of 12 laches. The standard for laches is different from that governing the accrual of copyright 13 ownership claims. Therefore, it is possible that an ownership claim would be within the 14 three-year statute of limitations yet still barred by laches. 15 The Ninth Circuit has held that laches may be asserted as a defense to an action 16 seeking a declaration of co-authorship (resulting in co-ownership) of a copyrightable work. 17 Jackson v. Axton, 25 F.3d 884, 887 (9th Cir. 1994), overruled on other grounds by Fogerty 18 v. Fantasy, Inc., 510 U.S. 517, 531-32 (1994). To prevail on the affirmative defense of 19 laches, a defendant must prove (1) an unreasonable delay by the plaintiff; and (2) prejudice. 20 Kling v. Hallmark Cards, Inc., 225 F.3d 1030, 1036 (9th Cir. 2000). 21 However, the Circuits are split on whether and to what extent the defense of laches 22 may be asserted in copyright cases. Other Circuits do not allow it, restrict the remedies to 23 which it can apply, or only allow it in exceptional circumstances. See Petrella v. Metro- 24 Goldwyn-Mayer, Inc., 695 F.3d 946, 958 (9th Cir. 2012) (W. Fletcher, concurring). In 25 Petrella, the Ninth Circuit held that laches barred the claims of copyright infringement, unjust 26 enrichment, and accounting that Paula Petrella, heir to writer Frank Peter Petrella, brought 27 against defendants, who produced and distributed the movie Raging Bull. In October, the 28 Supreme Court granted the Petition for Writ of Certiorari filed by Petrella. Petrella v. Metro9 11CV1557 BTM(RBB) 1 Goldwyn-Mayer, Inc., 134 S. Ct. 50 (2013). In her Petition, Petrella presents the question: 2 “Whether the nonstatutory defense of laches is available without restriction to bar all 3 remedies for civil copyright claims filed within the three-year statute of limitations prescribed 4 by Congress, 17 U.S.C. § 507(b).” 2013 WL 1868355. Oral argument is currently scheduled 5 for January 21, 2014. 6 Because the availability and/or scope of the defense of laches in copyright cases is 7 uncertain and before the Supreme Court, the Court denies Plaintiffs’ motion without 8 prejudice to the extent it is based on the defense of laches. Plaintiffs may file a new motion 9 for partial summary judgment on the ground of laches after the Supreme Court issues its 10 opinion in Patrella. 11 12 III. CONCLUSION 13 For the reasons discussed above, Plaintiffs Motion for Partial Summary Judgment 14 [Doc. 80] is DENIED.3 To the extent the motion is based on the defense of laches, the 15 motion is DENIED WITHOUT PREJUDICE. 16 IT IS SO ORDERED. 17 DATED: December 26, 2013 18 BARRY TED MOSKOWITZ, Chief Judge United States District Court 19 20 21 22 23 24 25 26 27 3 28 Because the motion is denied, the Court need not reach the issue of whether Willis’s claim of 50% copyright ownership, raised as a defense to Plaintiffs’ action, may be barred by the statute of limitations 10 11CV1557 BTM(RBB)
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