IP Law Daily, COPYRIGHT—M.D. Tenn.: Songwriters accused of infringement pleaded plausible counterclaims for breach of covenant not to sue, (Jun 18, 2014)

By Thomas Long, J.D.

Two songwriters named as defendants in a copyright infringement suit brought by a recording artist adequately pleaded counterclaims for copyright infringement based on a purported covenant not to sue entered into by the plaintiff, the federal district court in Nashville has ruled (Bowen v. Paisley, June 16, 2014, Trauger, A.). The songwriters could not, however, go forward with counterclaims for indemnification.

Plaintiff Amy Elizabeth Connor Bowen (“Connor”) copyrighted and recorded a song entitled “Remind Me.” She alleged that the defendants, including popular country music recording artists Brad Paisley and Carrie Underwood infringed her copyright by copying certain of its key constituent elements. According to Connor, the defendants may have gained access to “Remind Me” when she performed it during a 2008 Country Music Songwriting Workshop in Nashville, at which defendants Charles Christopher DuBois and John Kelley Lovelace—who are professional songwriters and music producers—served as guest instructors.

DuBois and Lovelace asserted that, as a condition of participation in the Workshop, Bowen entered into a “Participant Consent Agreement” with the organizers of the event. The Consent Agreement contained language providing that the submission of songs for critique by Workshop instructors constituted an agreement to release, indemnify, hold harmless, and not to sue any instructors or affiliated personnel, in connection with any claims, including claims for copyright infringement.

Lovelace and DuBois alleged that the Workshop’s representatives informed attendees that participation in the Workshop was conditioned on signing the agreement and that attendance at the Workshop would constitute acceptance of its terms. Connor allegedly agreed to the Consent Agreement orally, by attending the Workshop, and by signing it.

According to DuBois and Lovelace, Connor effectively waived her right to bring the copyright claims asserted against them, at least to the extent they related to access gained through the Workshop. They contended that, as instructors at the Workshop, they were intended third-party beneficiaries of the Consent Agreement. DuBois and Lovelace filed counterclaims for indemnification and breach of contract. Connor moved to dismiss the counterclaims.

Indemnification. DuBois and Lovelace purported to seek contractual indemnification from Connor. However, under Tennessee law, a contractual duty to indemnify generally only arises with regard to claims brought by third parties against the putative indemnitee, the court said. According to the court, allowing DuBois and Lovelace to receive “indemnification” from Connor would lead to the “absurd result” of requiring Connor to defend DuBois and Lovelace against her own claims. Accordingly, the counterclaims for indemnification were dismissed.

Breach of contract. DuBois and Lovelace appeared to base their counterclaims on the “covenant not to sue” in the Consent Agreement, and not its release. Connor argued that the Consent Agreement only waived claims that had accrued as of the date she signed it, not any future claims that accrued later, including her copyright claims in this case.

The parties did not dispute—at least for purposes of the motion to dismiss—that the language in the Consent Agreement constituted a general release only of claims that Connor possessed when she signed the agreement. However, DuBois and Lovelace argued that the covenant not to sue was distinct from the release language and could apply to future claims. They further argued that the court should not interpret the scope of the covenant not to sue as coextensive with the scope of the general release.

The court noted that, under appropriate circumstances, a covenant not to sue can cover future claims. On the other hand, DuBois and Lovelace did not provide controlling legal authority showing why the principles animating Tennessee’s generally strict construction of releases, and contract terms in general, should not extend to covenants not to sue. With respect to Connor’s motion to dismiss, the court determined that DuBois and Lovelace stated a plausible claim for breach of contract under the terms of the Consent Agreement. Therefore, the counterclaims were allowed to proceed, but the court made no findings concerning the appropriate construction or enforceability of the Consent Agreement as it related to Connor’s claims.

The court did specifically determine that DuBois and Lovelace were not entitled to seek an award of attorney’s fees under the Consent Agreement. The Consent Agreement did not specifically and expressly provide for the recovery of attorney’s fees for enforcing its provisions.

The case is No. 3:13-cv-0414.

Attorneys: Christopher Caleb Connor (Connor & Connor, LLC) for Amy Elizabeth Connor Bowen. Robb S. Harvey (Waller, Lansden, Dortch & Davis, LLP) for Brad Douglas Paisley, Sea Gayle Music, LLC, EMI Music Publishing, Inc., and Sony Music Entertainment. Elizabeth O. Gonser (Riley, Warnock & Jacobson) for EMI April Music, Inc.

Companies: Sea Gayle Music, LLC; EMI April Music, Inc.; EMI Music Publishing, Inc.; Sony Music Entertainment

Cases: Copyright TennesseeNews