IP Law Daily, COPYRIGHT—C.D. Cal: Lawsuit claims that Dua Lipa talked the talk, but will it walk the walk?, (Sep 12, 2024)

By Matthew Hersh, J.D.

‘Talk box’ allegation remains alive for now.

A California music producer and mechanical engineer adequately stated a claim that Dua Lipa and her production team purloined a recording he made with a so-called “talk box” technology for three unauthorized remixes of her song “Levitating,” the federal court for Los Angeles has held. The court, in denying the motion to dismiss, found that it did not matter that the producer failed to identify where in the smash hit his talk box work was used—particularly where the defendants admitted at oral argument that a portion of it did make its way into the final cut (Kante v. Lipa, No. 2:23-cv-06186-HDV-PD (C.D. Cal. Sept. 10, 2024)).

The lawsuit was brought by Bosko Kante, a music producer and mechanical engineer who has worked with Kanye West, Snoop Dogg, David Guetta, and Skrillex, among others. Kante is the founder of the company, ElectroSpit, which designs and manufactures a device known as the mobile talk box. According to the complaint, as now amended, one of Dua Lipa’s music producers approached the Ghanian-born inventor and asked him to create and perform a talk box performance, using the ElectroSpit Talk Box, to be licensed in connection with “Levitating.” The inventor and music producer, according to the complaint, then composed and recorded a performance on the ElectroSpit Talk Box, including original melodies and lyrics. The recording was eventually used in “Levitating,” with the inventor’s oral consent.

But while the original use of the recording was authorized, the complaint asserts, things went awry when Dua Lipa and her team allowed the song “Levitating” to be used in various remixes, including those by American DJ, Madonna, and Missy Elliott. Those further uses of the recording, the inventor and music producer alleges, went beyond the scope of the original oral license. In addition, the inventor alleges, the three remixes “sampled and incorporated a greater amount” of the original, including additional lyrics and melody.

Dua Lipa and her team moved to dismiss the complaint, leading to this opinion.

Substantial similarity. The court denied the motion to dismiss in a short opinion. The pop superstar argued that the talk box inventor failed to specify which exact portions of his recordings were used in the remixes and therefore failed to plead sufficiently the “substantial similarity” required under the Copyright Act. But the court found otherwise. The question of substantial similarity is “usually an extremely close issue of fact,” the court noted, “and disposing of copyright infringement cases before trial is disfavored.” The question at the pleading stage, the court noted, was merely whether Dua Lipa and her team had “fair notice of the allegations against it.” The complaint met that threshold, the court found.

The talk box inventor adequately pleaded a copyright infringement claim, the court found, by alleging that all or substantially all of his copyrighted recording—“i.e., his actual voice”—was used in the remixes without his permission. Indeed, at oral argument, the court noted, counsel for Dua Lipa and her team conceded that at least some portion of the underlying work was used in Levitating. Moreover, the court noted, Dua Lipa and her team were “plainly on notice as to the type of infringing conduct (the unauthorized use of the [recording]), the source of the claims (Plaintiff’s federally-registered copyright), and where the infringement can generally be found (within the [remixes]).” That was sufficient, the court noted. “There is no requirement that [the inventor] be made to identify, second-by-second, which portions were used,” the court underscored.

Preemption of demand for accounting. But while the court allowed the copyright infringement claim to go forward, it did throw out the claim for a financial accounting. The producer brought the claim to determine how much money Dua Lipa’s record company, Warner Records, made from the allegedly infringing remixes. “But the Copyright Act provides a near equivalent remedy,” the court noted. Specifically, the court observed, the Act provides a plaintiff with a judicial remedy entitling the copyright owner to “actual damages and any additional profits of the infringer”—meaning “actual damages suffered as a result of the infringement, and any profits that are attributable to the infringement and are not taken into account in computing the actual damages.” This statutory remedy “already affords plaintiff an adequate means by which to calculate damages in this action,” the court noted. The duplicative accounting claim was therefore preempted.

Commentary. Although the talk box producer has cleared this early step in the case, he may face factual challenges ahead. The producer acknowledges that he gave the Dua Lipa team oral permission to use his work in the original mix of the song. He insists, however, that the permission he gave explicitly extended only to the original and not to any later remixes—a contention the defendants vociferously deny. Given the inherent ambiguities of an oral argument and how common it is for pop songs to be released in a wide range of different mixes, the talk box producer may face some challenges in threading this factual needle.

The Case is No. 2:23-cv-06186-HDV-PD.

Judge: Vera, H.

Attorneys: Herbert Theodore Patty (Law Office of Herbert T. Patty) for Bosko Kante. Bradley J. Mullins (Mitchell Silberberg and Knupp LLP) for Dua Lipa.

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