IP Law Daily, COPYRIGHT—S.D.N.Y.: Infringement suit dismissed because of failure to obtain composition registration, (Mar 27, 2023)

By Robert B. Barnett Jr., J.D.

The plaintiff failed to obtain a composition registration before suing for composition infringement, and, in any event, the two songs lacked substantial similarity.

Emelike Nwosuocha’s suit alleging that Donald Glover’s song “This in America” infringed Nwosuocha’s copyright in his song “Made in America” was dismissed with prejudice because Nwosuocha, who performs under the name Kidd Wes, owned a copyright registration for the sound recording but not for the musical composition, a New York federal district court has ruled. The complaint, however, alleged only that Glover infringed the composition, including the lyrical theme, content, and structure. Even if the proper composition registration had been obtained, the court added, the complaint would still have been dismissed because Glover’s song was not as a matter of law substantially similar to Nwosuocha’s song (Nwosuocha v. Glover, March 24, 2023, Marrero, V.).

Background. In 2016, Emelike Nwosuocha, who performs under the stage name Kidd Wes, released a song called “Made in America” as a single, as a music video, and as part of an album called “Eleven: The Junior Senior Year.” In 2017, Nwosuocha obtained a Sound Recording registration from the U.S. Copyright Office.

In 2018, Donald Glover introduced his new song “This is America” when he performed it on Saturday Night Live. He also released the song commercially, which went on to win the 2019 Grammy Award for Record of the Year. It was a huge success.

In 2020, Nwosuocha sued Glover and those who helped him produce and release the song, including Sony Music Entertainment, in New York federal court. The complaint alleged direct, contributory, and vicarious copyright infringement in violation of the Copyright Act. Glover and the other defendants filed a joint motion to dismiss.

Registration. To recover for copyright infringement, of course, Nwosuocha is required to have obtained a valid copyright registration prior to filing suit. Music copyright registration comes in two flavors: composition and sound recording, that is, either for the way that the song was composed or for the particular way that it was recorded. The court ruled, however, that Nwosuocha’s complaint failed because the allegations and the registration did not match up. While the registration was for the sound recording, the complaint alleged infringement of the composition. As a result, Nwosuocha failed to obtain a composition registration before suing for composition infringement, and the complaint would thus be dismissed for failure to obtain a valid registration prior to suit.

Nwosuocha argued that a single copyright registration can cover both composition and sound recording. The court agreed with Nwosuocha, but it also concluded that Nwosuocha’s particular registration application failed to meet the criteria required for a registration to cover both types of registration because the application stated that it was only for a sound recording. In support of his argument that he had meant to get a composition registration, Nwosuocha cited Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022), in which the Supreme Court ruled that a certificate of registration remains valid despite inaccurate information. The New York court ruled, however, that Unicolors was of no help to Nwosuocha because his registration was already valid, and Unicolors does not stand for the proposition that Nwosuocha could retroactively expand the scope of his existing registration.

Thus, the complaint must be dismissed. Furthermore, the complaint must be dismissed with prejudice because Nwosuocha cannot amend his complaint to cure his failure to obtain the composition registration before suit was filed.

Substantial similarity. Having concluded that the complaint must be dismissed, the court went on to address the question of substantial similarity, assuming that the registration had been valid. The court’s conclusion was the complaint would have been dismissed anyway because the two songs were not substantially similar.

The complaint had alleged that the two songs shared the same “lyrical theme, content, and structure of the identically performed choruses.” No allegations were made about the overall structure of the songs, the order, and the number of verse and chorus sections, or the instrumentation, musical notes, or musical production. First, the court concluded that Nwosuocha’s song’s vocal cadence, delivery, rhythm, timing, phrasing, meter and pattern “lack sufficient originality alone, or as combined, to merit compositional copyright protection or are categorically ineligible for copyright protection.” For example, the lyrical theme for which Nwosuocha sought protection was “simply an idea, and ideas are not protectable.”

Second, although Nwosuocha’s chorus was sufficiently original to merit copyright protection, the chorus was “entirely different and not substantially similar” to Glover’s song. Nwosuocha’s song was “a short, simple, self-aggrandizing proclamation” that he had arrived on the rap scene. Glover’s song, on the other hand, addressed “contemporary America, what America means, and how it is perceived.” The complaint would have been dismissed anyway either because the elements sought to be protected were not protectable or because the protectable elements that did exist were not sufficiently similar.

Thus, the complaint was dismissed both because Nwosuocha lacked the proper registration and because the two songs were not substantially similar.

The court, therefore, granted the joint motion to dismiss all claims with prejudice.

The Case is No. 1:21-cv-04047-VM.

Attorneys: Imran H. Ansari (Aidala Bertuna & Kamins PC) for Emelike Nwosuocha. Jonathan David Davis (Jonathan D. Davis, PC) for Donald Mckinley Glover II.

Cases: Copyright NewYorkNews