United States District Court, E.D. LouisianaMar 19, 2003
CIVIL ACTION NO. 02-0425, SECTION "A" (5) (E.D. La. Mar. 19, 2003)


March 19, 2003



Before the Court is Cash Money Records, Inc.'s Motion for the Court to Grant It Summary Judgment Against Positive Black Talk, Inc. (Rec. Doc. 70). Plaintiff, Positive Black Talk, Inc. ("PBT") opposes the motion. The motion, taken under advisement on February 28, 2003, is before the Court on the briefs without oral argument. For the reasons that follow, the motion is DENIED.


In the Spring of 1998, PBT released local recording artist D.J. Jubilee's ("Jubilee") recording of Back That Ass Up. It is undisputed that Jubilee wrote the lyrics to Back That Ass Up. Jubilee applied for and received a certificate of registration (Form PA) from the United States Copyright Office for the words (lyrics) of the song. Jubilee also obtained a certificate of registration (Form SR) for the words and music in the sound recording of Back That Ass Up. In November 1998, defendant Cash Money Records ("CMR") released an album by defendant Teruis Gray p/k/a Juvenile ("Juvenile") with the single Back That Azz Up.

On February 15, 2002, PBT made an application for supplementary registration with the Copyright Office alleging that PBT should have been listed as the author and copyright claimant on Jubilee's prior PA registration (words only). That same date, PBT filed the instant suit asserting that it holds the copyright for Jubilee's recording and that Juvenile's Back That Azz Up infringes that copyright and violates various other laws. The PA supplementary application was received by the Copyright Office on February 19, 2002, four days after this suit was filed.

PBT did not file for supplementary registration with respect to the SR certificate until after CMR filed this motion for summary judgment.

As discussed below, PBT's current counsel filed additional supplementary registrations on February 20, 2003, after CMR had filed the instant motion for summary judgment, and over a year after this lawsuit was filed. Via those supplementary registrations PBT is undoubtedly attempting to demonstrate that it also owns the copyright to the sound recording of Jubilee's Back That Ass Up. CMR has argued that PBT has no such copyright.

CMR moves for summary judgment arguing that PBT lacks standing to bring an infringement claim because Jubilee, rather than PBT, is the copyright owner. However, should the Court conclude that PBT has standing to bring an infringement claim, then subject matter jurisdiction is lacking because the application for registration was received by the copyright office after the instant suit was filed. Further, to the extent PBT has any infringement claim, it can only be with respect to the words of Jubilee's song. Finally, CMR argues that PBT's state law unfair competition claims are preempted by federal copyright law.


a. PBT's Standing to Pursue An Infringement Claim; Words Versus Music

CMR argues that PBT's infringement claim is lacking in a key element,i.e., that PBT has no copyright ownership to protect. CMR is not questioning, as part of this argument anyway, the validity of the existing copyrights on Jubilee's song but rather asserts that Jubilee owns those rights, and therefore, is the only party who can seek redress for infringement. Given that proof of copyright ownership is an essential element of an infringement claim, CMR asserts that PBT has no right of action to bring an infringement claim.

In opposition, PBT argues that it does own the copyright. PBT argues that the recording agreement signed by Jubilee transferred ownership of the copyright to PBT. To the extent that the contract might be deficient in that respect, PBT argues that CMR cannot avail itself of that deficiency because Jubilee is not claiming ownership to the copyrights. In other words, PBT and Jubilee agree that PBT has ownership of the copyright. The Defendants, as infringers, lack standing to attack the transfer.

PBT attempted to make supplemental arguments in opposition as part of a memorandum filed in conjunction with a separate pending motion. The court will not consider those arguments because PBT filed them in contravention of the local rules which require leave of court to reply.

PBT also argues that it owns the copyright by way of the Form CA's that it filed with the Copyright Office to "correct" the "mistaken" name of the copyright claimant from Jerome Temple (Jubilee) to PBT. PBT asserts that such a correction was in order because Jubilee created Back That Ass Up as a work-for-hire.

PBT specifically denies, however, that Jubilee was an employee of PBT but was rather an independent contractor. Opposition at 11.

In reply, CMR points out that Jubilee's affidavit, in which he agrees that PBT owns the copyright to his song, directly contradicts his sworn deposition testimony. CMR points out that controlling Fifth Circuit law will not allow PBT to create an issue of fact by submitting an affidavit in direct contradiction of sworn deposition testimony. CMR also points out that the Recording Agreement only applies to sound recordings not the underlying musical composition. In short, CMR asserts that PBT never has had a copyright to the sound recording of Back That Ass Up.

To succeed on a claim for copyright infringement a plaintiff must prove two elements: 1) ownership of the copyrighted material, and 2) copying by the defendant. Computer Management, 220 F.3d at 400 (citing Alcatel USA, Inc. v. DGI Tech., Inc., 166 F.3d 772, 790 (5th Cir. 1999)); Apple Barrel Productions, Inc., 730 F.2d at 387 (citing Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1375 (5th Cir. 1981)). "Copyright ownership is shown by proof of originality and copyrightability in the work as a whole and by compliance with applicable statutory formalities." Computer Management, 220 F.3d at 400 (emphasis added) (citing Engineering Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335 (5th Cir. 1995). A plaintiff has complied with the statutory formalities when the Copyright Office receives the plaintiff's application for registration, fee, and deposit. Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991) (citing Apple Barrel Productions, Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984)). Without sufficient proof of copyright ownership, defendant is entitled to summary judgment. See Geoscan, Inc. v. Geotrace Tech., Inc., 226 F.3d 387, 392-93 (5th Cir. 2000).

The Fifth Circuit applies a liberal reading to section 411(a) by concluding that statutory formalities are complete when the Copyright Office receives payment of the required fee, deposit of the work in question, and the registration application. Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991). Other courts require plaintiff to actually possess the certificate of registration before suit is filed.See, e.g., Goebel v. Manis, 39 F. Supp.2d 1318 (D.Kan. 1999); Ryan v. Carl Corp., 1998 WL 320817 (N.D.Cal. June 15, 1998). Thus, in those jurisdictions, a suit brought while the registration application is pending is subject to dismissal without prejudice.

The law is clear in that PBT must, as part of its burden of proof, establish that it owns the copyrights it is alleging Defendants to have violated. Contrary to PBT's assertion, the ownership issue is not a "technicality" or diversion to avoid a trial on the merits but rather is a key element of its case. If PBT fails to prove ownership of the copyrights, it has no case for infringement.

At the outset, the Court rejects PBT's assertion that CMR lacks standing to challenge PBT's proof of copyright ownership. PBT's argument is based on its assertion that Jubilee and PBT agree that PBT owns the copyrights but that assertion is clearly contrary to the evidence of record. To support its argument and to oppose summary judgment, PBT obtained an affidavit and letter from Jubilee in which he states that he agrees that PBT owns the copyrights to Back That Ass Up. Exhibits to PBT's Opposition. However, that affidavit directly contradicts Jubilee's sworn deposition testimony dated October 24, 2002, in which he repeatedly and adamantly states that he owns all rights to Back That Ass Up. MSJ Exhibit 1. It is well-settled in this circuit that a party cannot oppose summary judgment by submitting an affidavit in contradiction of previous testimony without an adequate explanation. See, e.g., Albertson v. T.J. Stevenson Co., 749 F.2d 223, 228 (5th Cir. 1984) (citingKennett-Murray Corp. v. Bone, 622 F.2d 887, 894 (5th Cir. 1980)).

PBT's affidavits are the subject of a separate motion to strike filed by the Universal Defendants.

Furthermore, in the February 20, 2003, CA filings PBT is now attempting to list Jubilee as a co-author on Back That Ass Up which raises even further questions about the veracity of the statements contained in Jubilee's affidavit — an affidavit executed after the instant motion for summary judgment had been filed. Thus, at times PBT's and Jubilee's positions as to copyright ownership seem to be moving targets. Consequently, the Court will not rely on Jubilee's specious affidavit to conclude that PBT and Jubilee agree on the copyright ownership issue. Therefore, CMR, as the alleged third-party infringer, has standing to challenge PBT's ownership of the copyright. As noted above, without copyright ownership PBT has no case for infringement. The only question remaining then is whether PBT has offered proof sufficient to get the ownership issue in front of the jury.

PBT has certificate of registration PA 1-49-868 for the words (lyrics) of Back That Ass Up. The Copyright Office issued this certificate in response to the Form CA that PBT filed to "correct" the "mistaken" name of the author and copyright claimant. Although CMR takes issue with the legal efficacy of this procedure, the Copyright Office nevertheless issued the certificate. Moreover, published authorities recognize that courts take a very liberal approach to erroneous registrations forgiving even serious "mistakes" as to the author and copyright claimant. 2 Nimmer on Copyright § 7.20[B], at 212 (2002). Therefore, the Court concludes that the subsequently issued certificate of registration PA 1-49-868, while not irrefutable proof of copyright ownership, is sufficient for PBT to avoid summary judgment on the ownership issue vis à vis the words to Back That Ass Up.

The ownership issue with respect to the music or sound recording is a little more problematic. As of the time of PBT's corporate deposition, PBT had failed to take any steps to register a copyright for the sound recording of Back That Ass Up. It was only after CMR filed this motion for summary judgment that PBT filed additional Forms CA with the Copyright Office to obtain a registration certificate with respect to the music of Back That Ass Up. The Court assumes for now that the Copyright Office has received the new Forms CA which are dated February 20, 2003. Because the law in this circuit allows a plaintiff to go forward with an infringement suit after the Copyright Office receives an application notwithstanding that actual possession of the registration certificate is lacking, the Court likewise declines to grant summary judgment on the ownership issue vis à vis the sound recording.

b. Subject Matter Jurisdiction

CMR asserts that PBT's infringement claim must be dismissed because the Copyright Office did not receive the supplemental application until February 19, 2002 — after PBT filed this suit on February 15th of that same year. Therefore, CMR argues that the Court lacks subject matter jurisdiction over the claim.

In opposition, PBT argues that any jurisdictional defect was cured on February 19th when the Copyright Office received PBT's application for the corrected certificate.

The Copyright Act provides that

[N]o action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title.
17 U.S.C. § 411(a).

It is well-settled that registration with the Copyright Office is a jurisdictional prerequisite to filing a copyright infringement suit.Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 816 (5th Cir. 1997) (citing M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488 (11th Cir. 1990); Dielsi v. Falk, 916 F. Supp. 985, 994 n. 7 (C.D.Cal. 1996)). Without proof of registration, Plaintiff's suit is subject to dismissal for lack of subject matter jurisdiction. See Sefton v. Webbworld, Inc., 2001 WL 896933 (N.D.Tex. Aug. 2, 2001). Very few cases address whether a jurisdictional defect can be cured by complying with the statutory formalities of registration after suit is filed but some courts do allow for such a "cure." See, e.g., ISC-Bunker Ramo Corp. v. Altech, Inc., 765 F. Supp. 1308 (N.D.Ill. 1990); see also 2 Nimmer on Copyright § 7.16[B][1][a][ i]. The Fifth Circuit has not addressed whether a registration application received after an infringement suit has been filed cures a jurisdictional defect.

Clearly, this issue is very closely intertwined with the standing issue discussed in the previous section.

In the instant case the relevant authorities support both parties' positions on this issue. As noted above, some courts do allow for "cure" when the jurisdictional defect is rectified prior to suit, whereas others would take the more draconian approach of dismissing the suit only to require plaintiff to refile. Because there is no binding authority on point in this circuit, this Court declines to follow such a hardline approach, especially when the jurisdictional defect was cured only four days after suit was filed, this matter has been pending for over a year, and trial is set in approximately one month. The Court can think of no greater waste of judicial resources than to needlessly dismiss the suit without prejudice at this juncture simply for the sake of requiring PBT to refile.

Furthermore, many of the authorities in which dismissal was mandated arose in jurisdictions in which receipt of the actual certificate of registration is a jurisdictional prerequisite. Receipt of a certificate of registration can conceivably take months to receive which would leave a case in "jurisdictional limbo" for an unacceptable period of time. Dismissal under such circumstances makes perfect sense. However, the Fifth Circuit takes the very liberal approach of finding jurisdiction, not when plaintiff receives the certificate, but rather when the Copyright Office receives his application, deposit, and fee. See n. 5,supra. Thus, dismissal due to a four day delay would be somewhat out of character in this circuit in light of the liberal approach given to the standing issue.

Although not binding on this Court, the Court notes that theSefton case cited by CMR, although authored by a magistrate judge, did arise in this circuit in the Northern District of Texas. Nevertheless, that opinion does not persuade the Court that dismissal is appropriate in this case.

Accordingly, even though the Court lacked jurisdiction when the suit was filed, the Court finds that the defect was cured on February 19, 2002, when the Copyright Office received PBT's application. Similar reasoning applies with respect to the sound recording. Nothing can be gained from dismissal at this juncture.

c. Preemption of State Law Claims

The Fifth Circuit employs a two-part test for analyzing the Copyright Act's preemption provision, 17 U.S.C. § 301. First, the state cause of action is examined to determine if it falls "within the subject matter of copyright." Computer Management Assis. Co. v. Robert F. DeCastro, Inc., 220 F.3d 396, 404 (5th Cir. 2000) (quoting Daboub v. Gibbons, 42 F.3d 285 (5th Cir. 1995)). Second, the state cause of action is examined to determine if it protects rights that are "equivalent" to any of the exclusive rights of a federal copyright. Id. The "equivalency of rights" test is referred to in this circuit as the extra element test.Id. Under this test, if the alleged conduct would violate both state law and copyright law, then the state cause of action is "equivalent" to copyright. Id. (quoting Alcatel USA, Inc. v. DGI Tech., Inc., 166 F.3d 772, 787 (5th Cir. 1999)). However, if more or more qualitatively different elements are required to constitute the state-created cause of action, then the state cause of action is not preempted. Id. (quoting 1 Nimmer on Copyright § 1.01[B][1], at 1-13 (1998)).

Applying the extra element test, the Fifth Circuit has specifically held that a claim under Louisiana's Unfair Trade Practices Act is not preempted by federal copyright law because a cause of action under this Act requires proof of fraud, misrepresentation, or other unethical conduct. Computer Management, 220 F.3d at 404-05 (citing Schenck, 917 F. Supp. at 439). Therefore, CMR's preemption argument must fail.

CMR attempts to avoid Computer Management by pointing out that PBT has alleged in its complaint that the unfair competition claim and its copyright infringement claim are based on the same operative facts. If this statement ultimately means that PBT lacks evidence to support every element of its unfair competition claim then clearly Defendants will be entitled to judgment as a matter of law. However, PBT's statement that the claims are based on the same operative facts doesn't alter the strictly legal question CMR raises here, i.e., whether preemption applies. The Fifth Circuit has already answered that question in the negative.


IT IS ORDERED that Cash Money Records, Inc.'s Motion for the Court to Grant It Summary Judgment Against Positive Black Talk, Inc. (Rec. Doc. 70) should be and is hereby DENIED.