TOHO CO.v.PRIORITY RECORDS

United States District Court, C.D. CaliforniaMar 26, 2002
CV 01-04744-SVW (RZx) (C.D. Cal. Mar. 26, 2002)

CV 01-04744-SVW (RZx)

March 26, 2002


ORDER GRANTING PLAINTIFFS' MOTION FOR PARTIAL SUMMARY JUDGMENT


I. INTRODUCTION

Plaintiffs are asserting a claim for copyright infringement for the musical composition of "Godzilla's Theme," as well as the sound recordings found in two separate copyrighted works, namely, the movie "Godzilla v. Mothra" and the soundtrack album "The Best of Godzilla 1984-1995."

Defendants do not dispute having used the copyrighted material in the songs "Simon Says" and "Simon Says Remix." They only dispute Plaintiffs' ownership of the copyright to the musical composition, and claim that it is in the public domain.

Plaintiffs have filed this motion seeking partial summary judgment on the issue of liability. As set forth below, Plaintiffs' motion for partial summary judgment is GRANTED.

II. FACTUAL BACKGROUND

Plaintiffs Toho Co. Ltd. and Toho Music Corp. (collectively "Toho") are suing Priority Records, LLC, Rawkus Entertainment, LLC, Troy Jamerson p/k/a Pharoahe Monch, Trescadecaphobia, Inc., and Does 1-10, inclusive (collectively "Defendants") for copyright violation. The work at issue is the theme song to the Godzilla movies (hereinafter "Godzilla's Theme"), which was allegedly "sampled" in two rap songs created by the artist Troy Jamerson (professionally known as "Pharoahe Monch"), who is also the president and owner of Defendant Trescadecaphobia, Inc., the publishing company that purports to own the copyright in the "Simon Says" and "Simon Says Remix" musical compositions that are the allegedly infringing songs. Defendant Rawkus Entertainment is the record company that released the album "Internal Affairs," on which the songs at issue appear, and Defendant Priority Records manufactured and distributed the album.

In or about 1997, Toho authorized GNP Crescendo Records ("GNP") to manufacture and sell in the United States two soundtrack albums that feature music from various Godzilla motion pictures, including music entitled "Godzilla's Theme." The albums are entitled "The Best of Godzilla 1954-1975" and "The Best of Godzilla 1984-1995" (collectively, the "Soundtrack Albums"). All of the songs on these albums are featured on the soundtracks of various Godzilla motion pictures. Several of the tracks on the Soundtrack Albums are sound recordings of "Godzilla's Theme" as it was featured in various Godzilla motion pictures. As of 1999, these were the only soundtrack albums featuring "Godzilla's Theme" that Toho had authorized for release in the United States.

"The Best of Godzilla 1954-1975" was registered with the U.S. Copyright Office on or about March 25, 1998, and received Registration No. SR 260-703. "The Best of Godzilla 1984-1995" was registered with the U.S. Copyright Office on or about January 29, 1998, and received Registration No. SR 260-704. The U.S. Copyright Office subsequently issued Supplementary Registrations for each of the Soundtrack Albums indicating that Toho is the copyright owner. "The Best of Godzilla 1954-1975" was given Supplementary Registration No. SR 271-417. "The Best of Godzilla 1984-1995" was given Supplementary Registration No. SR 271-418.

Additionally, Toho registered its copyright in the motion picture "Godzilla vs. Mothra" (aka "Godzilla and Mothra: The Battle for Earth") on or about April 11, 1996. The United States Register of Copyrights issued a registration certificate to Toho as Registration No. PA 796-964 for the copyright in the motion picture. "Godzilla's Theme" is featured in that motion picture.

Jamerson, in writing the songs "Simon Says" and "Simon Says Remix" (which is simply a different version of "Simon Says" with additional vocalists, but appears as a separate song on the album "Internal Affairs"), incorporated the actual sounds from "Godzilla's Theme" through a process known as sampling. The album "Internal Affairs" was recorded in 1999. According to Chris Meyer, an expert on digital sampling, "`Simon Says' and `Simon Says Remix' (tracks 5 and 15 from the `Internal Affairs' album) copy and incorporate the actual sounds contained in Track 13 of the soundtrack album entitled `The Best of Godzilla 1984-1995.' Based on the waveform analysis, as explained in Exhibit `A,' it is scientifically undisputed that the preexisting recording of the Godzilla theme music was sampled in the course of the creation of `Simon Says' and `Simon Says Remix.'" Meyer Decl., at ¶ 4, Ex. A. The particular version of "Godzilla's Theme" used in Defendant's songs was the version featured in the motion picture "Godzilla v. Mothra." See Ina Decl., at ¶¶ 10-11.

In response to the Court's inquiries regarding the evidentiary foundation underlying Mr. Meyer's conclusions, Toho submitted additional evidence to verify the fact that Track 13 ("Godzilla's Theme") from "The Best of Godzilla 1984-1995" was sampled in the songs "Simon Says" and "Simon Says Remix." See Moss 2d Supp. Decl., at ¶¶ 3-14; Smith Decl., at ¶¶ 2-3; Meyer Supp. Decl., at ¶¶ 2-9. Defendants do not dispute any of these facts.

Furthermore, it is undisputed that Jamerson used "Godzilla's Theme" in both "Simon Says" and "Simon Says Remix." In fact, Jamerson admits this in his declaration. See Jamerson Decl., at ¶¶ 7-10. Jamerson even claims that, prior to releasing the album, he informed the owners of Rawkus Entertainment (Brian Brater and Jarrett Myer) that he sampled "Godzilla's Theme." He did this so that they could "clear" the samples (presumably meaning to obtain a license), which Jamerson claims was the common operating practice to which he was accustomed. See id., at ¶¶ 13-17. Moreover, Toho has submitted copies of "Godzilla's Theme" (Track 13 from "The Best of Godzilla 1984-1995"), as well as copies of "Simon Says" and "Simon Says Remix." In listening to the recordings, it is virtually undeniable that "Godzilla's Theme" is used in the latter two recordings.

In Defendants' opposition brief, they put forth essentially two arguments: (1) Toho does not have a valid copyright ownership in the musical composition of "Godzilla's Theme," and (2) "Godzilla's Theme" is in the public domain. However, these arguments, even if true, would still not preclude liability for copyright infringement in this case. Defendants have failed to distinguish between the copyright ownership in the musical composition of "Godzilla's Theme," and the copyright ownership in the sound recording of "Godzilla's Theme" on the CD soundtrack and in the motion picture. Even if Toho does not have a valid copyright in the musical composition of "Godzilla's Theme," which, as discussed below, the Court finds otherwise, Defendants do not dispute that Toho has a valid copyright interest in the sound recording of "Godzilla's Theme" from Track 13 of "The Best of Godzilla 1984-1995" and the 1992 movie "Godzilla v. Mothra." That recording was undisputedly sampled directly into the recordings of "Simon Says" and "Simon Says Remix." Therefore, there is no dispute that Defendants infringed upon Toho's copyright interest in the sound recording of "Godzilla's Theme" from "The Best of Godzilla, 1984-1995," regardless of whether they had a copyright interest in the musical composition of the song itself.

Only Priority Records and Rawkus are included in the opposition. Jamerson and Trescadecaphobia have filed no opposition, and thus may be deemed by the Court as having consented to the granting of the motion, pursuant to L.R. 7-12.

III. ANALYSIS

A. Partial Summary Judgment Standards

Toho seeks partial summary judgment on the issue of copyright infringement liability. Rule 56(c) requires summary judgment on this issue when the evidence, viewed in the light most favorable to the Defendants, shows that there is no genuine issue as to any material fact, and that Toho is entitled to judgment on this issue as a matter of law. See Fed.R.Civ.P. 56(c); Tarin v. County of Los Angeles, 123 F.3d 1259, 1263 (9th Cir. 1997). Toho bears the initial burden of establishing the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986). That burden may be met by "`showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Id. at 325, 106 S.Ct. at 2554. Once Toho has met its initial burden, Rule 56(e) requires the Defendants to go beyond the pleadings and identify facts that show a genuine issue for trial. See id. at 323-34, 106 S.Ct. at 2553; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

B. Infringement of "Godzilla's Theme" Sound Recording

In order to prove infringement, a plaintiff must first show ownership of valid copyrights in the works allegedly infringed, and second, the copying or exploitation of those works by defendants. See Brown Bag Software v. Symantec, Inc., 960 F.2d 1465, 1472 (9th Cir. 1992); Melville B. Nimmer David Nimmer, Nimmer on Copyright, § 13.01, at 13-5 (2001). At the summary judgment stage, a plaintiff must show that there is no genuine issue of material fact with respect to either of these elements.

In addition to the claim for copyright infringement in the musical composition, discussed below, Toho claims an infringement in the motion picture "Godzilla vs. Mothra" and the soundtrack album containing the "Godzilla's Theme" sound recording from that motion picture. "Motion pictures" are defined in the Copyright Act to include "accompanying sounds, if any." 17 U.S.C. § 101. "It is now clear that the sound track is an integral part of a motion picture, and as such fully protected by the motion picture copyright." Nimmer, Nimmer on Copyright, § 2.09[E], at 2-162.

Toho has demonstrated that it is the valid copyright owner of the Soundtrack Albums and "Godzilla v. Mothra," via the U.S. copyright registration certificates that they have submitted to the Court. See ma Decl., Ex. A, B. The registration certificate constitutes prima facie evidence of the validity of the copyright and of the facts stated in the registration certificate. See 17 U.S.C. § 410 (c); Triad Systems Corp. v. Southeastern Exp. Co., 64 F.3d 1330, 1335 (9th Cir. 1995). Defendants have not put forth any evidence to contradict Toho's assertion that they are the copyright owners in the above materials.

It appears that GNP had originally registered the copyright for the Soundtrack Albums in its own name. However, a correction was later made, making Toho the copyright owner, and the Copyright Office issued supplementary registrations with Toho listed as the proper copyright owner.

Regarding the second prong of the analysis — demonstrating that Defendants copied or exploited the copyrighted works — Defendant Jamerson has admitted to sampling the copyrighted material in his songs "Simon Says" and "Simon Says Remix." See Jamerson Decl., at ¶¶ 7-10. Moreover, the uncontested evidence presented from Chris Meyer further demonstrates that the samples used in the infringing songs came from the copyrighted works at issue. See Meyer Decl., at ¶ 4, Ex. A; Moss 2d Supp. Decl., at ¶ 3; Smith Decl., at ¶¶ 2-3; Meyer Supp. Decl., at ¶¶ 2-9. Digital sampling without permission has been held repeatedly to constitute copyright infringement. See, e.g., Jarvis v. AM Records, 827 F. Supp. 282, 295 (D.N.J. 1993) ("[T]here can be no more brazen stealing of music than digital sampling.")

Since Defendants have not contested Toho's arguments with respect to the above infringements, Plaintiffs are entitled to partial summary judgement on the issue of liability with regard to the sound recordings of "Godzilla's Theme" from the movie "Godzilla v. Mothra" and the soundtrack album "The Best of Godzilla 1984-1995."

C. Infringement of "Godzilla's Theme" Musical Composition

Toho is also claiming infringement for the musical composition of "Godzilla's Theme," of which it claims to be the copyright owner. A composition is a work separate and distinct from the sound recording embodying the composition. See 17 U.S.C. § 102 (a). Defendants contest Toho's ownership of the musical composition copyright.

The musical composition "Godzilla's Theme" was created in Japan in 1962 by composer Akira Ifukube. See Ifukube Supp. Decl., at ¶ 3. It was first featured in the movie "King Kong vs. Godzilla," — initially released in Japan on August 11, 1962 — and first appeared in the United States in the 1964 Godzilla film "Mothra v. Godzilla." See Ina 2d Supp. Decl., at ¶¶ 5, 7; Ifukube Supp. Decl., at ¶ 4. "Godzilla's Theme" has since appeared in many subsequent Godzilla movies. See Ifukube Supp. Decl., at ¶ 5. Through several written agreements, Ifukube has assigned to Toho all of his copyright interests in all of the music that he composed for the Godzilla motion pictures, including "Godzilla's Theme." See id., at ¶ 7; Ifukube Decl., at ¶¶ 3-4, Ex. A; Ina Decl., at ¶¶ 14-16, Ex. C.

Defendants put forth the following two arguments in support of their claim that Toho does not own the copyright to the musical composition of "Godzilla's Theme": (1) the chain of title does not support Toho's claim that it gained ownership of the copyright; and (2) the musical composition of "Godzilla's Theme" is in the public domain.

Defendants' arguments are entirely misguided. They appear to argue that because the copyright in the 1964 film "Mothra v. Godzilla" did not specifically list Ifukube as a copyright owner, then the ownership rights to "Godzilla's Theme" were defective. Since there was no valid transfer of ownership, the copyright in the musical composition was never registered, and hence it is in the public domain. However, that argument does not comport with copyright law. Ifukube was the composer of the music; there is no logical reason why his name must appear on the copyright for the motion picture in which that music was featured. He is permitted to grant the motion picture copyright owner a license to use his music in the motion picture, and still retain copyright ownership over the musical composition. The motion picture copyright does not need to list each copyrightable element within the motion picture. See Nimmer, Nimmer on Copyright, § 7.18[C] [3], at 7-203; Greenwich Film Productions, S.A. v. DRG Records, Inc., 833 F. Supp. 248, 250-51 (S.D.N.Y. 1993). Furthermore, the sound recording in the 1964 film "Mothra v. Godzilla" is not even the sound recording at issue in this case. Plaintiffs are asserting infringement in the sound recording of "Godzilla's Theme" in the 1992 film "Godzilla v. Mothra."

Since the musical work first appeared in the United States in 1964, it is governed by the 1909 Copyright Act, which provided an initial copyright term of 28 years, followed by an automatic renewal period that has been extended to 67 years. See 17 U.S.C. § 304 (a)(1)(A), 304 (a)(1)(C), 304(a)(2)(B); Nimmer, Nimmer on Copyright, § 9.05[A] [2], at 9-41.

Even if Ifukube never granted a license to use his music, that would not invalidate his ownership in the musical composition. It would simply mean that Ifukube would have an infringement action against the creators of the motion picture.

Defendants spend many pages explaining how the original copyright owner in the 1964 film did not validly assign its rights in that movie to Toho. Toho disputes this, and appears to be correct. However, since the copyright ownership of that motion picture is not relevant to infringement in this case, the Court sees no need to discuss this issue.

Regardless, even if Defendants are correct in asserting that there was never a valid registration of the copyright in the musical composition of "Godzilla's Theme," that argument still fails. The Copyright Restoration Act ( 17 U.S.C. § 104A) provides, with respect to copyrights in foreign works that may have fallen into the public domain in the United States due to failure to comply with U.S. statutory formalities (such as publication without notice), these copyrights were automatically restored as of January 1, 1996. See 17 U.S.C. § 104A(a)(1)(A); Nimmer, Nimmer on Copyright, § 9A.01, at 9A-4 ("Under the Uruguay Round Agreements Act, Congress catapulted almost all foreign works still durationally eligible for U.S. protection out of the public domain. Protection now subsists under U.S. law for all works published within the last seventy-five years almost anywhere in the world, so long as the original work was of qualifying foreign rather than U.S. origin.").

In order to qualify for restoration, the work must have been first published in an "eligible country," which is a nation, other than the U.S., which is a member of the Berne Convention or other international treaties. See 17 U.S.C. § 104A(h)(3). Additionally, the work must (1) not be in the public domain in its source country, (2) have entered the public domain the United States due to, inter alia, noncompliance with statutory formalities, (3) have at least one author who was a national of an eligible country at the time the work was created, and (4) not have been published in the United States within thirty days of its first publication in the eligible country. See 17 U.S.C. § 104A(h) (6)(A)-(D).

As indicated above, "Godzilla's Theme" was first published in Japan in 1962. Japan is an eligible country, as it became a signatory to the Berne Convention in 1899. Furthermore, the work is not in the public domain in Japan, because under Japanese copyright law, once the work is created, copyright protection automatically vests and subsists throughout the life of the author plus fifty years. See Paul Edward Geller Melville B. Nimmer, International Copyright Law and Practice, Japan, §§ 2 [1] [a], 3 [1], at JAP-8-9, 22 (2001). Since Ifukube is still alive today, so is his Japanese copyright.

Although Ifukube may not have even been required to separately register his copyright in the United States, if "Godzilla's Theme" was still somehow deemed to have entered the public domain in the United States, it would have been for failure to comply with statutory requirements, such as publication without notice or failure to renew. See 17 U.S.C. § 104A(h)(6)(C)(i). Since the work first appeared in the United States in 1964, the work was entitled to an initial copyright term of 28 years, which would then have been automatically renewed in 1992 for another 47 years, which has since been extended to a total of 95 years from the date of first publication. Therefore, were "Godzilla's Theme" to have entered the public domain in the United States, it would have been because of a failure to comply with statutory formalities, not because of a natural expiration of the copyright term.

Under the Berne Convention, foreign works need not be separately registered in the United States. See 17 U.S.C. § 411 (a). However, it is unclear whether this applies to works first published before March 1, 1989, the date the United States entered the Berne Convention.

Even if the work was not subject to automatic renewal (which exists for all works that achieved statutory copyright protection under the 1909 Act after December 31, 1963), the work would have entered the public domain only via a failure to renew the copyright, which would still place the work within the requirements of the Copyright Restoration Act.

Additionally, with regard to the final requirements under the Copyright Restoration Act, Ifukube has represented that he is a citizen and resident of Japan and has lived in Japan his entire life. See Ifukube Supp. Decl., at ¶ 2. Moreover, the work was not published in the United States until 1964, which was two years after first publication in Japan, and therefore clearly satisfies the thirty-day requirement. Thus, had the "Godzilla's Theme" musical composition entered the public domain, it would have been automatically restored under the Copyright Restoration Act for the remainder of the term of copyright that the work would have otherwise been granted in the United States had it not entered the public domain. See 17 U.S.C. § 104A(a)(1)(A)-(B). Furthermore, since Ifukube has assigned his ownership in "Godzilla's Theme" to Toho, they are the rightful owners of the copyright in the musical composition.

Another Central District case involving Toho had previously ruled that the copyright in certain works of Toho (in that case, Godzilla photographs), even if they could be considered to have entered the public domain due to publication without notice, would also have been restored by the Restoration Act. See Toho Co. Ltd. v. William Morrow and Co., Inc., 33 F. Supp.2d 1206, 1216 (C.D. Cal. 1998).

Therefore, Toho has demonstrated a valid copyright and proper ownership in the musical composition of "Godzilla's Theme," and is entitled to partial summary judgment on the issue of copyright infringement with respect to the musical composition as well.

IV. CONCLUSION

Based on the above discussion, Plaintiffs' motion for partial summary judgment is GRANTED.

As a result, the only remaining issue for trial concerns the matter of damages. The trial date is hereby scheduled for May 7, 2002 at 9:00 a.m., and the Pretrial Conference is scheduled for April 29, 2002 at 3:30 p.m.

IT IS SO ORDERED.