IP Law Daily, COPYRIGHT—S.D.N.Y.: Musician’s suit over recording of Smokey Joe’s Café musical goes forward, (Apr 1, 2022)

By Ursula Furi-Perry, J.D.

Musician asserted infringement, rather than ownership claims, which did not make them time-barred; further, his contributory copyright claims cleared the plausibility threshold.

Chapman Roberts, a musician, who created the vocal arrangements for a musical sufficiently stated claims for direct and contributory copyright infringement, as well as dissemination of false copyright management information in violation of the Digital Millennium Copyright Act, against various defendants for the unauthorized distribution of a filmed version of the musical, the federal district court in New York Cit has decided. Contrary to the defendants’ assertion, Roberts, in his second amended complaint, asserted infringement, rather than ownership claims, which did not make them time-barred. However, Robert’s claim for unjust enrichment was dismissed as preempted by the Copyright Act (Roberts v. BroadwayHD LLC, March 31, 2022, Failla, K.).

Background. Chapman Roberts, a musician, created the vocal arrangements for the musical Smokey Joe’s Café, based on original songs. The Vocal Arranger Agreement provided that the vocal arrangements could not be performed, transcribed, recreated, copied, published, or recorded without Roberts’ permission, with the exception of limited license rights to perform the vocal arrangements in limited types of live performances and to record a cast album. Roberts, who had registered a copyright for the vocal arrangements with the U.S. Copyright Office as the sole owner, retained sole ownership in the copyright. Subsequently, the musical’s producers granted Broadway Television Network, Inc. permission to use the musical compositions in a video recording of the musical, which then proceeded to distribute the Recording from 2000 to 2013 without permission from, or notice, or compensation, to Roberts. Through a series of sales of publishing rights and licensing agreements, Sony/ATV Music Publishing, Inc. (SATV), Amazon Digital Services LLC (Amazon), and Broadway HD LLC all claimed distribution rights in the recording for digital streaming. In 2019, Roberts filed this lawsuit, seeking relief for direct and contributory copyright infringement, dissemination of false copyright management information under the Digital Millennium Copyright Act, and common law unjust enrichment.

In a prior decision, the court held that the producer of the musical could not use the corporate veil defense to overcome infringement claims arising out of the unauthorized distribution of a filmed version of the musical. The court, however, dismissed contributory copyright infringement and false dissemination of copyright management information claims against corporate entities to whom the producer had assigned its limited licensing rights and its successor in interest for failure to state a claim and as time-barred.

In the current round of dispositive motion practice, BroadwayHD and Amazon,; Leiber Stoller Productions, Inc., Michael Stoller, and the Estate of Jerome Leiber (the “L&S Defendants”); and Sony/ATV Music Publishing, LLC (“SATV,”) separately moved to dismiss Roberts’ claims against them for failure to state a claim. Much of the court’s focus was on the second amended complaint filed by Roberts, in which several new facts were introduced. Roberts, in his second amended complaint, clarified the factual basis for why the case did not involve a dispute over copyright ownership. Before the court was the defendants’ motions to dismiss for failure to state a claim under Rule 12(b)(6) of the Federal Rules of Civil Procedure.

Copyright infringement. The court first held that Roberts, in his second amended complaint, asserted infringement, rather than ownership claims. This mattered for purposes of determining whether the claim was time-barred: if ownership was the dispositive issue in an infringement claim, and the ownership claim were time-barred, then the infringement claim itself would be considered time-barred, even if there had been infringing activity in the three years prior to filing the lawsuit.

In this second round of motion practice, the court noted, Roberts’ claims centered not on ownership. In his second amended complaint, he detailed the bases for his claim that the L&S Defendants and SATV were aware that he was the exclusive owner of the vocal arrangements, but that both defendants purported to license the recording without his authorization—essentially, that the defendants received a limited license to use the works, but then exceeded the scope of that license. Although the L&S defendants may pursue their ownership argument as the case proceeds, the court was not persuaded that that argument dictated dismissal due to the claims’ being time-barred at this point. Because BroadwayHD and Amazon’s motion to dismiss turned entirely on their argument that Roberts had pleaded an ownership claim as to them, the court denied their motion in full.

Contributory copyright infringement. The court also sustained Roberts’ contributory copyright infringement claim against the L&S defendants and SATV. Roberts alleged that SATV committed contributory copyright infringement by providing a sync license to Broadway Worldwide in 2018 without his authorization, giving Broadway Worldwide a right to exploit the recording. Broadway Worldwide, in turn, granted a license to use the Recording to BroadwayHD for digital streaming, and BroadwayHD then streamed the recording on its own platform and through Amazon’s digital streaming services. Roberts alleged that SATV should be held contributorily liable for BroadwayHD and Amazon’s later infringement of the vocal arrangements on the theory that SATV “provided the tools and support for” that infringement.

The court held that the sync license did not definitively foreclose Roberts’ claim, which it found to have cleared the plausibility threshold for both the claim against SATV and the downstream infringement claim against the L&S defendants. “The Court recognizes that SATV has identified several substantial weaknesses in Plaintiff’s claim, and it doubts Plaintiff’s ability to maintain such a claim on a fuller evidentiary record. That said, the Court finds that the SAC has threaded the needle and plausibly stated the claim and thus denies SATV’s motion to dismiss it,” the court stated.

Unjust enrichment. Lastly, Roberts argued that his unjust enrichment claim went beyond his contributory copyright infringement claim and could be maintained in the alternative to his primary infringement claim. The court disagreed, holding that the unjust enrichment claim was preempted under the Copyright Act. Roberts sought to use his unjust enrichment claim to recoup any damages that may not be recoverable under the Copyright Act, which was not permissible, and the court dismissed that claim with prejudice.

Conclusion. The motion to dismiss the unjust enrichment claim was granted, while all other motions to dismiss were denied in full.

The Case is No. 1:19-cv-09200-KPF-RWL.

Attorneys: Tatsuya Adachi (Leichtman Law PLLC) for Chapman Roberts. Nicolas Jampol (Davis Wright Tremaine LLP) for BroadwayHD LLC. Richard H. Bergman (Bergman & Jacobs, P.A.) for Broadway Television Network, Inc. and Broadway Worldwide, Inc.

Companies: BroadwayHD LLC; Broadway Television Network, Inc.; Broadway Worldwide, Inc;, BroadwayOnline.com, Inc.; Bruce Brandwen Productions, Inc.; Leiber Stoller Productions, Inc.; Amazon Digital Services, LLC, and Sony/ATV Music Publishing LLC

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