IP Law Daily, COPYRIGHT—E.D. Mich.: Bow-wow-wow-yippee-yo-yippie-yay: Estate of former George Clinton collaborator can celebrate-first round win, (Apr 26, 2023)

By Matthew Hersh, J.D.

Funk legend’s motion to dismiss copyright claims by heirs of keyboardist Bernie Worrell is roundly rejected

The fact that a former collaborator lost a state-court contract lawsuit against funk music superstar George Clinton did not preclude the collaborator’s estate from bringing a federal copyright lawsuit based his alleged rights to the same musical works, the federal court for Flint, Michigan, has held. The court, in denying Clinton’s motion to dismiss, held that the doctrine of res judicata did not apply because the former collaborator could not have raised the copyright claim in a state court forum (Estate of Worrell v. Thang, Inc., April 25, 2023, Behm, F.).

The lawsuit was brought by the estate of George (“Bernie”) Worrell Jr., a keyboardist and former bandmate of Clinton’s. Worrell collaborated with Clinton as a songwriter, musician, producer, and performer on the majority of songs that were recorded in the 1970s and1980s by Clinton and various bands and/or musical groups, including Parliament and “Funkadelic, among many others. (However, according to a recitation of facts in Bridgeport Music, Inc. v. UMG Recordings, Inc., 585 F.3d 267 (6th Cir. 2009), a prominent music sampling, Worrell was not involved in the creation of Atomic Dog—perhaps the best known George Clinton song and the one whose lyrics appear in the heading to this article).

The musician’s estate sued Clinton in several forums. It first sued in New York state court, alleging that he was not paid the royalties due to him under the recording contract he signed with Clinton (through Clinton’s company, Thang Inc.). But the state court found that the contract was not valid because it had not been executed by Clinton. The estate then sued in the Michigan federal court, alleging that if the musician had never signed a recording contract, then he naturally continued to retain his rights under the Copyright Act for being a joint author of many of Clinton’s works.

Clinton and his company moved to dismiss, leading to this opinion.

Res judicata. The court denied the motion to dismiss. The court first addressed the question of res judicata. Clinton argued that because the estate had brought a lawsuit based on essentially the same underlying transaction in state court, then it was precluded from bring this case in federal court. The court disagreed. State courts do not have jurisdiction over cases that arise under the Copyright Act, the court observed—meaning that the copyright issues could not have been raised in the state court case. To be sure, the court noted, some cases involving the alleged co-ownership of a work may be in state court, to the extent that the ownership dispute arises out a contract that allegedly apportions such ownership. But the estate was not merely claiming co-ownership of the works, the court reasoned, but was also claiming that the keyboardist was a co-author of the works. That was a right, the court noted, that arises exclusively under the Copyright Act.

Injunctive relief. The court also refused to dismiss the estate’s claim for declaratory judgment. This request for relief was not “futile,” as Clinton suggested, because if the estate was able to prevail on its claim that the late keyboardist had been a joint author of the works at issue, the estate would then be entitled to an accounting of its share of royalties. Nor was the request for declaratory relief filed too late, the court found. A cause of action for declaration of ownership arises only at the time that the party’s claim of ownership is expressly disputed by another. Here, the court noted, Clinton never openly disputed the keyboardist’s co-authorship of the works at issue until raising it in his pleadings in the state case. Thus, the complaint was timely.

The case is No. 4:22-cv-11009-FKB-DRG.

Attorneys: Daniel D. Quick (Dickinson Wright) for Estate of George Worrell, Jr. James P. Allen (Schenk & Bruetsch PLC) for Thang, Inc.

Companies: Thang, Inc.

Cases: Copyright MichiganNews