IP Law Daily, COPYRIGHT—S.D. Cal.: Village People singer could pursue amended claim of vicarious infringement against music producer, (Jun 27, 2016)

By Mark Engstrom, J.D.

Victor Willis—the former lead singer and a songwriter for The Village People—pleaded sufficient facts, in an amended complaint against music producer Henri Belolo, to establish a plausible claim for vicarious copyright infringement, the federal district court in San Diego has ruled (Willis v. Scorpio Music (Black Scorpio) S.A., June 24, 2016, Moskowitz, B.). Belolo’s motion to dismiss was denied.

Willis sued Belolo for vicarious copyright infringement because Belolo had allowed Sixuvus Ltd. to present unauthorized public performances of musical compositions that Willis had co-written. The court dismissed the initial claim because Willis had alleged that Can’t Stop Productions Inc. (CSP) had granted Sixuvus a license for dramatic performances of the compositions at issue.

Thereafter, Willis filed an amended complaint that again alleged vicarious infringement against Belolo. The amended complaint alleged that Sixuvus, a company that was controlled by Belolo and CSP, had conducted dramatic "grand rights" performances of "YMCA," "Macho Man," "In The Navy," and other compositions that Willis had co-written. According to the amended complaint, CSP had not, in fact, granted Sixuvus a license to present dramatic performances of his compositions, and CSP and Belolo had not accounted to Willis for any of the money that they had received from Sixuvus for the dramatic performances.

The defendants—Belolo, CSP, and Scorpio Music—argued that Willis had filed a "sham amendment" because the original complaint had alleged that "During the three years prior to the commencement of this Action, Defendant CSP authorized third parties, including, without limitation, Sixuvus, to present the Dramatic Performances on a royalty-free license basis," but the amended complaint had alleged that "Sixuvus failed to seek, and Defendants did not grant Sixuvus, a grand rights license for live performances for the subject musical compositions."

Willis explained the inconsistency as an "inadvertent" allegation in the initial complaint. According to Willis’s amended complaint, the original complaint contained the inadvertent misstatement that CSP had granted a license to Sixuvus to present the dramatic performances.

The court accepted Willis’s explanation of an inadvertent mistake—for the time being—and decided not to treat the amended complaint as a sham amendment.

The court also found that Willis’s claim of vicarious infringement was not barred by the doctrine of res judicata. In the court’s view, an identity of claims did not exist between the current action and a prior action that was decided on the merits. The prior action involved a determination of authorship and the proper share of copyright interests in various disputed works, the court explained, whereas the current action involved grand rights performances of some of the compositions that were the subject of the prior suit, and further involved the defendants’ purported failure to compensate Willis or to account for the dramatic performances.

According to the court, the factual issues raised by the current action—whether Sixuvus had a license to engage in dramatic performances of the relevant compositions and whether those performances constituted "grand rights" performances—did not relate to the factual circumstances of the prior action. For that reason, the court concluded that an identity of claims was lacking. Res judicata thus failed to preclude Willis’s claim for vicarious infringement.

Grand rights performances. The defendants argued that a "grand rights" license was not required for the dramatic performances at issue because no plot or storyline was apparent in any of the songs, and the songs could not be combined to tell a story. Willis argued that the performances were "plot-based with characters, costumes, choreography, dialogue, and the use of Plaintiff’s Compositions aids in the telling of the story."

The court noted that grand rights licenses were required for "dramatic performances" that "aid[ed] in telling a story." However, the court could not determine whether the dramatic performances at issue were "dramatic" in nature, such that a grand rights license was necessary. For that reason, the court concluded that the defendants’ argument would be more appropriate on a motion for summary judgment.

The case is No. 15cv1078 BTM(RBB).

Attorneys: John T. Jasnoch (Scott & Scott LLP) for Victor Willis. Robert S. Besser (Law Offices of Robert S. Besser) for Henri Belolo, Scorpio Music (Black Scorpio) S.A., and Can’t Stop Productions, Inc.

Companies: Scorpio Music (Black Scorpio) S.A.; Can’t Stop Productions, Inc.

Cases: Copyright CaliforniaNews