IP Law Daily, COPYRIGHT—S.D.N.Y.: Attorney fees award denied in ‘Mah Na Mah Na’ infringement suit, (Aug 9, 2017)

By Linda O’Brien, J.D., LL.M.

An award of attorney fees to the prevailing defendants was inappropriate in an action for copyright infringement by an Italian music publishing company against a U.S. publishing company and its affiliate for recording and distributing an Italian composer’s song derived from a work previously created for the plaintiff’s Italian film, the federal district court in New York City has decided. Although the plaintiff’s claim was unsuccessful, the suit was not objectively unreasonable, frivolous, or made in bad faith (Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc., August 4, 2017, Sullivan, R.).

In October 1966, Creazioni Artistiche Musicali, S.r.l. ("CAM") entered into a written agreement with composer Piero Umiliani to compose and perform music for the film "Duello nel Mondo." The agreement transferred to CAM "all rights" to the music composed by Umiliani for the film, as long as Umiliani’s own rights were not prejudiced or limited. In June 1968, Umiliani composed the song known as "Mah Na Mah Na" for another film, and the song became popular after being performed by the Muppets on television and in film soundtracks.

According to CAM, "Mah Na Mah Na" was identical to the instrumental-plus-vocal composition created by Umiliani for "Duello nel Mondo" and was, accordingly, an unauthorized derivative work. In November 2014, CAM sued Carlin America, Inc., and affiliated company Edward B. Marks Music Co.—U.S. publishers of "Mah Na Mah Na"—for copyright infringement, alleging that "Mah Na Mah Na" was an unauthorized derivative work. In January 2017, the court granted the defendants’ motion to dismiss on the ground that CAM lacked standing to sue because it was not the exclusive owner of "Mah Na Mah Na."

Before the court was the defendants’ motion for attorney fees and costs.

Objective reasonableness, frivolousness. The court found determined that the plaintiff’s decision to bring suit under the 1966 agreement was not objectively unreasonable or frivolous. The terms of the agreement suggested a broad transfer of rights to CAM and the court’s determination of its meaning and scope of the transfer required extensive research and findings under Italian law. Further, the plaintiff’s argument that United States law should apply was not objectively devoid of legal or factual basis since it was not initially apparent to the parties or the court that a choice of law analysis would be required.

CAM’s position concerning the substance of Italian law was not objectively unreasonable, the court held. Although the court ultimately determined not to rely on the plaintiff’s experts, the plaintiff’s argument that Italian law favored its claim was supported and made in good faith.

Motivation. The plaintiff’s motivation to bring suit was not driven by an improper motive that would justify an award of attorney fees. According to the court, there was no evidence to support the defendants’ contention that the plaintiff was a copyright troll. CAM is a long-running music publisher and was not litigious, having never before filed a lawsuit in a United States court.

Deterrence. The need to compensate the defendants and to deter opportunistic plaintiffs did not support an award of fees, the court found. The defendants were large music publishing companies that presumably possessed the resources and incentives to litigate. Further, the plaintiff’s conduct in the litigation was not objectively unreasonable, frivolous, or driven by an improper motive and therefore did not warrant the deterrent effect of fees.

The case is No. 1:14-cv-09270-RJS.

Attorneys: Robert William Clarida (Reitler Kailas & Rosenblatt LLC) for Creazioni Artistiche Musicali, S.r.l. Eric Charles Osterberg (Osterberg LLC) for Carlin America, Inc. and Edward B. Marks Music Co.

Companies: Creazioni Artistiche Musicali, S.r.l.; Carlin America, Inc.; Edward B. Marks Music Co.

Cases: Copyright NewYorkNews