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noting that "this jurisdiction has an interest in the convenient adjudication of the rights of resident copyright holders"
Summary of this case from Greenlight Capital, Inc. v. GREENLIGHT(SWITZERLAND) S.A.Opinion
No. 00 Civ. 8854 (NRB).
July 16, 2001.
OPINION AND ORDER
This action concerns the rights to the song Who Let the Dogs Out?, which achieved enormous popular success in 2000. Plaintiff Deston Songs, LLC ("Deston" or "plaintiff") seeks a declaratory judgment pursuant to 28 U.S.C. § 2201, that no defendant has any right, title or interest in the song. Deston also brings an infringement claim against all defendants pursuant to various provisions of Title 17 of the United States Code.
Now pending is Wingspan Records ("Wingspan"), Fulbrook Music Publishing ("Fulbrook"), and Ossie Gurley's motion to dismiss the action on the alternative grounds of: (1) the doctrine of forum non conviens, and (2) a failure to join necessary and indispensable parties, pursuant to Federal Rule of Civil Procedure 12(b)(7). Those same defendants move in the alternative for this Court to stay the action pending disposition of a Canadian action involving similar issues. Additionally, defendants Charles Fulp and Scott Brooks move to dismiss the claims against them for a lack of personal jurisdiction. For the following reasons, the motions are denied.
BACKGROUND
The Parties
Plaintiff Deston Songs, LLC is a New York City-based owner of musical copyrights. Defendant Ossie Gurley ("Gurley") is a Canadian citizen and a Toronto-based composer, musician and producer of musical recordings in the Caribbean styles of calypso and soca. Anslem Douglas ("Douglas"), who is not a party to this lawsuit, is also a writer and performer of Caribbean music who resides in the Toronto area.
Defendant Fulbrook is a division of co-defendant Wingspan, a company located in Danville, Virginia. Both defendants Scott Brooks and Charles Fulp are principals of defendants Fulbrook and Wingspan, and are also Virginia residents.
The Composition of the Song
In the spring or early summer of 1996, Douglas visited with music producer Carl Henderson, at Henderson's offices in Port-of-Spain, Trinidad. See Henderson Decl., ¶¶ 1-2. At that time, Douglas sang a number of his compositions for Henderson, including lines from Who Let the Dogs Out? (hereinafter "the song" or Doggie.) See id., ¶ 3. Henderson — perhaps to his later regret declined to produceDoggie, although he agreed to produce two other songs by Douglas. See id. ¶ 4-5.
For the purposes of this motion to dismiss, we assume the allegations in the complaint to be true, although we express no views as to their validity. See Wiwa v. Royal Shell Petroleum Co., 226 F.3d 88, 93, n. 1 (2d Cir. 2000). However, to the extent that the historical facts regarding the song's ownership are in dispute, those disputes are largely immaterial to the instant motion.
Approximately a year later, Douglas sang the song in New York, for his manager, Derek Noel, and another record producer, Julian Williams ("Williams"). See Noel Decl., ¶¶ 2-3. Williams agreed to produceDoggie, as well as several other songs that Douglas had composed. See id., ¶ 4. At Douglas's suggestion, it was agreed that the songs would be recorded at Gurley's studio in Toronto, Canada. Gurley and Douglas had become acquainted when Douglas had worked on other recording projects at Gurley's studio.
In June, 1997, Douglas and Gurley began work on Doggie at Gurley's Toronto studio. Their account of this process does not differ significantly. Gurley recounts it as follows:
Anslem [Douglas] had "in his head" and sang for me a verse and a chorus/hook of a song which we quickly came to call Doggie. The lyric to the chorus/hook was comprised of the words "who let the dogs out", followed by barking noises. Over the next two months, Anslem and I worked on several songs together. With respect to Doggie, while Anslem created additional lyrics, I wrote music for the song, including the chord structure, countermelodies, drum tracks and bass line, as well as contributing to the development of the melody.
Gurley Decl, ¶ 6. See also Douglas Decl., ¶ 7 (reciting similar facts)
The Publication of the Song
In early 1998, Williams' record company released as a CD single the version of Doggie recorded at Gurley's studio. On the jacket cover of that release (in which the song was called "Dogie" [sic]), it indicates that Douglas was the composer and Gurley was the arranger. See Douglas Decl., Exh. 3. This release achieved modest success in the Caribbean, was performed by Douglas at Carnival in Trinidad in 1998, and was subsequently included in a compilation of Caribbean music that Williams produced, entitled "Calypsoca". See Douglas Decl., Exh. 4.
A year later, Douglas's wife and Gurley co-produced an anthology of Douglas's music called "Possessed." See Douglas Decl., Exh. 5. Doggie, now entitled Who Let the Dogs Out?, was included on this album; once again Douglas was credited as the author of the work, and Gurley was credited as arranger. Douglas asserts that after none of these releases did Gurley claim authorship of the song; additionally, Douglas alleges that Gurley does not now claim authorship of any of the many other songs upon which they collaborated, despite the fact that their working relationship was identical in each instance. See Douglas Decl., ¶ 14.
The songwriter and recording artist known as Chuck Smooth also released a work in 1998 entitled Who Let the Dogs Out?, which he claimed to have composed. The Smooth release was included on a CD produced by defendant Wingspan. Although different from Doggie in many respects, it apparently contained a vocal sample from Doggie of Douglas singing the now-famous chorus/hook, "who let the dogs out, woo, woo, woo,". Gurley Decl., ¶ 10, n. 1. A license existed for the use of the sample, but the circumstances of that license are murky and controverted. Gurley admits that he gave a license to Wingspan to use material from Doggie in the Smooth recording (although his authority to do so is disputed); from the current record it is unclear what role, if any, Douglas played in that process.
Although Douglas and Gurley's recording was apparently in a Carribean soca style, the Smooth release was performed in the style of rap or hip-hop music. Soca (which is derived from the term "soul-calypso") is a Carribean style that grew out of calypso, but is a more disco-influenced, energetic form of music that adds electric guitar and bass to the traditional calypso ensemble. See generally Soca News, available at http://www.socanews.com (last visited July 2, 2001)
The Smooth recording was quite successful; in the Billboard rankings of popular music, it reached at least as high as eight in the category of "Hot Rap Singles". See AP Online, available at 1999 WL 12931455 (February 19, 1999)
In March, 2000, Douglas sold all rights in the song to plaintiff Deston Songs, LLC. On July 25, 2000, pursuant to a license from Deston, the Bahamian pop group The Baha Men, who previously had not enjoyed widespread poular success in the United States, released an immensely successful recording of Doggie. The Baha Men's recording became an overnight sensation in the late summer of 2000, rose to the Billboard Top Ten list, was a popular anthem at sporting events around the country, and won a Grammy Award for Best Dance Recording. See Jordan Raphael, "Through the Woof", Los Angeles Times, November 7, 2000, at Fl, available in 2000 WL 25915317; Edna Gunderson, "Baha Men Have Collared A Hot "Dogs' Hit",USA Today, Sept. 6, 2000, at 1D, available in 2000 WL 578842.
Litigation History
Two individuals, Leroy Williams and Patrick Stephenson, filed a lawsuit on October 25, 2000, in the Ontario Superior Court, No. 00-CV-199535 (hereinafter "the Canadian action"), alleging that they had originated the chorus/hook of "who let the dogs out, woo, woo, woo, woo", and that Gurley and Douglas did not properly credit for their role in composing the song. See Gurley Decl., Exh. C. Gurley, in turn, served a third party claim on both Douglas and Wingspan, see Carton Decl., Exh. 6, and Douglas replied with counter-and cross-claims, see id. Exh. 7.
Deston's general counsel, Joel H. Weinstein, avers that he learned of the Canadian action on November 1, 2000, after Deston had taken significant steps towards preparing the instant action. This matter was filed on November 20, 2000, after certain preliminary discussions with opposing counsel that failed to resolve the dispute. See Weinstein Decl., ¶¶ 3-7.
Plaintiff has now settled all of Douglas's claims in the Canadian action as the result of a mandatory, court-ordered mediation. See Crain Decl., ¶¶ 6-7; Crain Supplemental Decl., ¶¶ 2-3. Although some terms of the settlement are confidential, plaintiff is permitted to reveal that the settlement provides for discontinuance of the action against both Douglas and Gurley, 1an assignment of the Canadian plaintiffs' rights in Doggie to Deston, and dismissal of Douglas's counterclaim against the Canadian plaintiffs. See Crain Decl., at ¶ 6.
When the motion papers were submitted to the Court, a settlement in the Canadian action had been reached in principle, but had not been formalized. Defendant thus contended that in evaluating the instant motion, the Court ought not to rely on that settlement as an established fact. However, plaintiff submitted a supplemental affidavit on July 5, 2001, indicating that the settlement had "been consummated by a written settlement, fully executed," including the terms discussed above. Cram Supplemental Decl., ¶ 2.
DISCUSSION
A. Forum Non Conveniens
Defendants first move to dismiss this case pursuant to the doctrine offorum non conveniens. Because many of the witnesses and events concerning the dispute are located in Canada, defendants argue that Canada is the appropriate forum for this dispute. Although Canada may be an appropriate forum for the litigation, we do not believe dismissal is warranted in this case.
Background Principles
Determinations under the common law doctrine of forum non conveniens are "committed to the sound discretion of the trial court." Piper Aircraft v. Reyno, 454 U.S. 235, 257 (1981); see also Peregrine Mvanmar Ltd. v. Segal, 89 F.3d 41, 46 (2d Cir. 1996). The doctrine is a "discretionary device permitting a court in rare instances to 'dismiss a claim even if the court is a permissible venue with proper jurisdiction over, the claim.'" Wiwa v. Royal Dutch Petroleum Co., 226 F.3d 88, 100 (2d Cir. 2000) (quoting PT United Can Co. v. Crown Cork Seal Co., 138 F.3d 65, 73 (2d Cir. 1998)). When the convenience of parties and their witnesses, as well as the ends of justice, are served, a federal court may exercise its "inherent power to decline to entertain a case over which it has jurisdiction." DiRienzo v. Inter-Continental Hotel Corp., 232 F.3d 49, 56 (2d Cir. 2000).
In 1947, the Supreme Court decided companion cases, Gulf Oil Corp. v. Gilbert, 330 U.S. 501, and Koster v. American Lumbermens Mutual Casualty Co., 330 U.S. 518, which established the framework for forum non conveniens analysis that continues to govern the federal courts today.See Wiwa, 226 F.3d at 100. That inquiry has two-steps: first, a court is to examine if an adequate alternative forum exists, see Gilbert, 330 U.S. at 506-07; if so, the court must then balance a series of factors reflecting the private interests of the parties and the public interests at stake, if any, see id., at 508-09 (listing factors).
The burden falls upon the defendant to prove both the adequacy of the alternate forum, and that the various factors strongly outweigh the presumption that plaintiff may select the forum for litigation. It is the first principle of forum non conveniens analysis that unless the balance of factors "is strongly in favor of the defendant, the plaintiff's choice of forum should rarely be disturbed." Gulf Oil, 330 U.S. at 508;DiRienzo, 232 F.3d at 57. Additionally, that, presumption is strengthened when the, plaintiff is a United States citizen litigating against at least some foreign parties. This rule "is not motivated by jingoism, but rather by the sensible consideration that the greater connections a plaintiff has to his chosen forum, the more likely is the inconvenience to him resulting from changing to a foreign forum." DiRienzo, 232 F.3d at 62-63 (citing Wiwa, 226 F.3d at 102)
Alternate Forum
There is little dispute that Canada would be an adequate alternate forum for this litigation. A foreign forum is typically adequate provided that defendants are amenable to service of process there. See Piper Aircraft, 454 U.S. at 254, n. 22; DiRienzo, 232 F.3d at 57. Where, as here, defendants agree to submit to the jurisdiction of the foreign forum, see Rosario Decl, ¶ 11, the adequacy of that forum is assured.
In rare cases, a plaintiff may challenge the adequacy of an alternative forum if the available remedies are substantially limited.See DiRienzo, 232 F.3d at 57 (A foreign forum "will usually be adequate so long as it permits litigation of the subject matter of the dispute, provides adequate procedural safeguards, and the remedy . . . is not so inadequate as to amount to no remedy at all."). However, no such allegations are made here, and we have no doubt that the Canadian courts adjudicate these claims with the utmost fairness.
Public Interest Factors
The Gilbert test directs us to examine two sets of interests: the private interests of the parties, and any interest the community may have in the location of the litigation. We find that the community interest in this litigation is substantial, and therefore none of the so-called "public interest" factors outweigh plaintiff's choice of forum.
1. Administrative Concerns
The first factor concerns whether either forum presents a particular administrative burden. Defendant makes no showing that there is an administrative advantage to litigating this case in the Canadian system. In DiRienzo, the Court of Appeals had occasion to compare the courts of this district and those of Ontario, Canada. TheDiReienzo court concluded, "[this] factor does not strongly favor either party. There is evidence that Ontario courts, like the Southern District of New York, suffer from congestion." 232 F.3d at 62. Thus, this factor provides no support for dismissing the action.
Indeed, although it is well-settled law that Gulf Oil requires the consideration of four public interest factors, defendant presents the test in its moving papers as containing only three such factors, and omits the first. See Defendant's Mem., at 6.
2. Local Interest in the Controversy
The second and third, factors require us to evaluate the. connection of this litigation to the Southern District of New York. Defendants allege repeatedly that this action essentially requires the adjudication of the legal significance of events that took place between Canadians, in Toronto, Canada. If this action were solely a declaratory judgment action, that assertion would wield greater (but not dispositive) force in the analysis. However, this is also an infringement action, and the alleged acts of infringement occurred in New York and elsewhere within the United States. When a lawsuit is based on events that occurred both at home and abroad, the fact that some of the acts took place outside the United States is insufficient to overcome the presumptive deference to plaintiff's choice of a domestic forum, since the home forum has at least some interest in the resolution. See Byrne v. British Broadcasting Corp., 132 F. Supp.2d 229, 238 (S.D.N Y 2001)
Moreover, Deston is a copyright holder residing in New York City, and this jurisdiction has an interest in the convenient adjudication of the rights of resident copyright holders. See Jose Armando Bermudez v. Bermudez Int'l, No. 99 Civ. 9346, 2000 WL 1225792, at *5 (S.D.N.Y. Aug. 29, 2000) ("U.S. courts also have a strong interest in enforcing the nation's copyright laws, as those laws are designed to protect authors creating works in this country and, indirectly, the consuming public.") Although Deston, unlike the plaintiff in Bermudez, may not have created the intellectual property in the United States, Deston undisputedly and validly holds Douglas's rights. Therefore, the Court's otherwise-strong interest in enforcing an American citizen's copyright interests remains unabated.
We also observe that the song itself has a distinctly local connection, in that it was adopted by the New York Mets as their unofficial theme song during the 2000 post-season, including the Subway Series. See Pete McEntegart, "Track to the Subway Series", Sports Illustrated, at 58 (Nov. 1, 2000). The Baha Men performed the song live at Shea Stadium before Game 4 of the 2000 World Series. of course, we do not suggest that this connection is sufficient to sustain a local interest in the controversy under Gilbert, however.
Finally, we note that although defendant seeks to characterize this as an action by Canadians against Canadians, only one party to this litigation — Ossie Gurley — is not American. Defendants Wingspan, Fulbrook, Brooks and Fulp are all located in Virginia, thereby establishing this controversy as essentially between domestic parties. This fact is particularly relevant to the discussion of the private interest factors, infra.
The third public interest factor is very closely tied to the second, and asks whether local juries would be unduly burdened by being required to hear the case. Given the local interests cited above, jury duty would not be imposed on a community with no relation to the controversy if the matter were to be tried here.
3. Choice of Law and Application of Foreign Law
The parties are in disagreement over whether United States or Canadian copyright law applies in this action. Even assuming that Canadian law applies, however, we cannot say that this creates a particularly burdensome application of foreign law such that we should consider dismissing the action. As the Supreme Court has noted, application of foreign law alone "is not sufficient to warrant dismissal when a balancing of all relevant factors shows that the plaintiff's chosen forum is appropriate." Piper Aircraft, 454 U.S. at 260 n. 29.
Private Interest Factors
The relevant private interest factors are also four-fold: (1) ease of access to evidence; (2) cost for witnesses to attend trial; (3) availability of compulsory process, and (4) other factors that affect the efficacy of the litigation. See DiRienzo, 232 F.3d at 66. None of these, singularly or in combination, outweighs the deference due plaintiff's choice of forum. Because these issues of logistics and efficiency are closely related, we discuss them collectively.
Although certain events significant to this litigation occurred in Canada, most notably the recording sessions in Gurley's Toronto studio, the relevant evidence regarding the defendants' liability would come from a number of sources. Plaintiff points out that at least three of the witnesses to the events in Canada reside in either Britain or Trinidad, thereby rendering Canada no more convenient a forum than this one for those individuals. Additionally, Douglas's activities during his 1997 trip to New York are highly relevant to determining the validity of his claims of authorship, and at least two New York witnesses would testify about those events. Moreover, defendants, located in Virginia, cannot plausibly claim that the efficiencies of a Canadian trial outweigh those of one held in New York. Thus, as in Peregrine Myanmar v. Segal, 89 F.3d 41, 46-47 (2d Cir. 1996), wherever this trial would be held, at least some witnesses would need to travel abroad.
Furthermore, to prevail on a motion to dismiss for forum non conveniens, a defendant must demonstrate actual inconvenience. See DiRienzo, 232 F.3d at 66 (Defendants must "clearly show" that a — trial in plaintiff's chosen forum "would be so oppressive and vexatious to defendant as to be out of all proportion to plaintiffs' convenience.") In this matter, no such showing has been, made. Presumably a trial for the three Virginia defendants would be more convenient in New York than in Ontario, and Gurley makes no specific allegations as to why litigation in New York would be vexatious. See id. at 66 (noting that "willing witnesses can travel from Toronto to New York by a direct 90-minute flight. . . Such travel is not burdensome by modern standards, and defendants have not shown otherwise.")
Additionally, this is not a case that involves substantial physical evidence that would be costly to transport, nor is it contingent on access to a particular local geographic site. Cf. Piper, 454 U.S. at 238-39 (requiring the dismissal of the case in favor of a Scottish forum, when Scotland was the site of the airplane crash at issue)
Defendants also do not specifically explain how the unavailability of compulsory process would prejudice them. There is no argument, for example, beyond general allegations, that a specific and critical non-party witness would be subject to process in Canada, but not here. Absent that showing, we presume that the traditional methods of process available to the Court should suffice to allow this action to proceed in a thorough and expeditious fashion. See Fed.R.Civ.P. 28(b) (providing for letters rogatory permitting depositions in foreign nations);DiRienzo, 232 F.3d at 67 (noting the availability of videotaped depositions for use at trial when compulsory process is unavailable.).
Finally, should it be determined either that Wingspan's license to Smooth was unauthorized, or that Deston owes Gurley royalties for revenues received through the license to the Baha Men, damages discovery would be almost exclusively in the United States, as Deston and Wingspan (and, presumably, their associated records) are located here. Thus, no insuperable barriers to evidence are created by trying this action in this Court, and in a damages phase it appears that this action would most efficiently be located here.
Related Action
The Gilbert test mandates that we examine any other factors that might be relevant in weighing the relative efficiencies of the two fora under consideration. In that regard, defendants argue that the existence of the Canadian action favors the dismissal of this one. The Second Circuit recently addressed the relevance of related litigation in Guidi v. Inter-Continental Hotels Corp., 224 F.3d 142, 148-49 (2d Cir. 2000). Related litigation is "not listed as a relevant factor . . . in Gilbert," the court observed, although in some circumstances it may bear on 1the analysis nonetheless. However, for the reasons discussed below in response to defendant's alternative request for a stay, we do not find the existence of the Canadian action to tilt the equities significantly in favor of dismissal.
Thus, in conclusion, after due consideration of all the public and private interests at stake, we find that none of them outweighs Deston's preference for litigating in this, its home forum, and defendants' motion to dismiss is denied.
B. Motion to Stay the Proceedings
In the alternative, defendants argue that because of the ongoing Canadian action, we ought to stay this litigation pursuant to the Court's inherent powers. "[T]he power to stay proceedings is incidental to the power inherent in every court to control the disposition of the causes on its docket with economy of time and effort for itself, for counsel, and for litigants." Landis v. North Am. Co., 299 U.S. 248, 254 (1936). For the following reasons, we elect not to prolong this litigation by staying it.
First, it is unclear if the Canadian action will proceed at all. Douglas and Gurley have settled their claims with the Canadian plaintiffs, thus leaving Gurley's third-party claim against Deston and cross-claim againt Douglas as the only claims remaining in that case.See Crain Supplemental Decl., ¶ 3. A contested motion to continue the crossclaims in the Canadian action (as required by Ontario R. Civ. p. 11) has now been filed, and no date certain has been set for its hearing. See id. The third party and crossclaims in the Canadian action (and thus the action itself) survive only if Gurley prevails on that motion to continue. Thus, staying this action might achieve nothing but needless delay if the Canadian action does not proceed.
Even if it were certain that the Canadian action was moving forward, its existence does not clearly require a stay. The Canadian action was, in the first instance, not between the parties to this lawsuit; two other individuals sued Gurley and Douglas. Thus, when this declaratory judgment and infringement action was filed, there were not an identity of parties or issues between the two suits. Gurley's third party claims against Deston and Wingspan, which replicate the issues in this case, were filed some four months after this matter was commenced, and nearly five months after the initiation of the Canadian suit. Although defendants accuse Deston of forum-shopping by filing this lawsuit, the same might be said about defendants for introducing unrelated issues to the Canadian action after the initiation of this suit, and thereby creating duplicative litigation.
Unlike motions to dismiss or stay litigation because of similar litigation in another federal district, motions to stay based on our inherent power are not governed by a strict "first filed" rule. Cf. See First City Nat. Bank and Trust Co. v. Simmons, 878 F.2d 76, 79 (2d Cir. 1989). Even in § 1404 cases, however, evidence of forum-shopping may be reason to make exception to the rule. See Motion Picture Lab. Technicians Local 780 v. McGregor Werner, Inc., 804 F.2d 16, 19 (2d Cir. 1986).
Moreover, although defendants represent to the Court that the Canadian litigation is on a "fast track," the most recent affidavit from plaintiff's Canadian counsel indicate that the action is now on a "Standard Track" in the Canadian Court. See Crain Supplemental Aff., ¶ 3. In sum, staying this litigation when the outcome of the Canadian motion to continue — which addresses the part of the Canadian action that was not first filed — is in doubt merely burdens this Court's docket, with an uncertain reward. Accordingly, we decline to exercise our discretion to stay this litigation; the ends of justice are best served by its proceeding expeditiously.
C. Failure to Join Indispensable Parties
Defendant alleges that the Canadian plaintiffs are necessary and indispensable parties, and that their absence from the case mandates its dismissal. This argument is mooted by the settlement of the Canadian action, which resulted in the transfer of the Canadian plaintiffs' rights to Deston.
D. Personal Jurisdiction
Defendants Fulp and Brooks move to dismiss pursuant to Fed.R.Civ.P. 12(b)(2), alleging a lack of personal jurisdiction. This motion is without merit, and is denied.
Fulp and Brooks are susceptible to jurisdiction under the New York long-arm statute, CPLR §§ 302(a)(1)-(3). Plaintiff has pled a prima facie case that as principals of Wingspan and Fulbrook, both defendants caused the allegedly infringing Smooth recording to be sold in New York.See Bank Brussels Lambert v. Fiddler, Gonzalez Rodriguez, 171 F.3d 779, 784 (2d Cir. 1999) (reviewing pleading requirements necessary to survive a Rule 12(b)(2) motion).
This allegation is sufficient to establish for jurisdictional purposes that they have committed a tortious act outside of the state (production of an allegedly infringing product) with injury that occurred here (the sale of that product). Cf. Citigroup Inc. v. City Holding Co., 97 F. Supp.2d 549, 567-68 (noting that jurisdiction is proper under CPLR § 302(a)(3) when a corporation solicits business in New York through an interactive web site containing allegedly infringing trademarked content).
CONCLUSION
For the foregoing reasons, defendants' motion to dismiss is denied. The parties are directed to appear at a conference on July 23, 2001, at 4:00 p.m., in Courtroom 21A at the United States Courthouse, 500 Pearl Street, New York, New York. The parties are expected to have conferred beforehand to arrive at an efficient discovery plan for, this case.
IT IS SO ORDERED.