David Batiste Paul Batiste Michael Batiste, Plaintiffs-Appellants-Cross-Appellees v. Island Records, Inc. Island Records, Ltd. McA Music Publishing, a Division of McA Inc. Attrell Cordes, Also Known as P.M. Dawn, Doing Business as P.M. Dawn Wade Featherstone, Individually Gee Street Records, Inc., Defendants-Appellees-Cross-Appellants, and Isaac Bolden
Docket: 98-30046
Court: Court of Appeals for the Fifth Circuit; June 21, 1999; Federal Appellate Court
David, Paul, and Michael Batiste, collectively known as the Batistes, filed a lawsuit against several defendants, including Attrell Cordes (P.M. Dawn) and Island Records, for copyright infringement and violations of the Lanham Act, Louisiana's Unfair Trade Practices Law, and state laws on conversion and misappropriation. The case stemmed from Cordes using a digital sample of the Batistes' song "Funky Soul," which they created in 1968 and recorded in 1970 with Isaac Bolden. The district court dismissed claims against defendant Wade Featherstone due to lack of personal jurisdiction and granted summary judgment to all defendants except Bolden on most claims. However, the court allowed Paul and Michael Batiste to voluntarily dismiss their claims of conversion and misappropriation without prejudice. The appellate court affirmed the district court's rulings but found it abused its discretion by permitting the voluntary dismissal of the surviving claims and remanded the case with instructions to enter judgment for all defendants, excluding Bolden, on those claims.
The Batistes had entered into two contracts with Bolden: a Songwriter's Contract, which transferred copyright rights of "Funky Soul" to Bolden, and an Artist Contract, which granted Bolden rights to the physical master tape and sound recording, including the rights to manufacture and sell the recordings.
Shortly after recording "Funky Soul," Bolden secured copyright registration for the composition, naming David Batiste as the sole writer. In 1970, Bolden authorized the release of two records featuring "Funky Soul," which did not achieve commercial success. Attrell Cordes of the band "P.M. Dawn" sampled a six-and-a-half-second segment of "Funky Soul" for his song "So On," which was included in "the Bliss Album," released on March 15, 1993. Prior to the album's release, Gee Street confirmed Bolden's rights to "Funky Soul" and entered into three contracts with him: a Master Recording Sampling License, a Mechanical License Agreement, and an Administration Agreement. The Master Recording Sampling License allowed Gee Street to produce records of "So On," which included a sample of "Funky Soul." Bolden received a $15,000 advance against royalties for the sample's use. The album credits "D. Batiste" as a co-writer of "So On," indicating that "Funky Soul" was used under license from Bolden. The Batistes, aware of the sampling by July 1993, applied to register as co-writers of "So On." On March 10, 1995, the Batistes filed a lawsuit in the U.S. District Court for the Eastern District of Louisiana against several parties, including Island Records and Bolden, alleging violations of federal copyright laws, the Lanham Act, Louisiana's Unfair Trade Practices Law, and state laws on conversion and misappropriation. They claim Bolden breached fiduciary duties and contractual obligations by not accounting for income from "Funky Soul" and participating in the misappropriation of their rights. They seek injunctive and declaratory relief, an accounting of income related to "the Bliss Album" and "Funky Soul," and damages.
Wade Featherstone filed a motion to dismiss the Batistes' claims on October 15, 1996, citing lack of personal jurisdiction and failure to state a claim, asserting his status as a citizen and resident of England with insufficient ties to Louisiana. On December 6, 1996, defendants Island Records, MCA, Gee Street, and Cordes moved to dismiss the Batistes' copyright infringement claims for lack of subject matter jurisdiction, arguing the Batistes failed to demonstrate valid copyright registration for "Funky Soul." They also sought summary judgment on all claims, while the Batistes requested summary judgment in their favor on copyright, Lanham Act, and misappropriation claims against the defendants and Bolden.
The district court granted summary judgment to the defendants on all claims by David Batiste and most claims by Paul and Michael Batiste, except for conversion and misappropriation. The court concluded that the Songwriter's Contract transferred any interest David had in "Funky Soul" to Bolden, who authorized the defendants' use of the composition, resulting in no genuine issue of material fact regarding the copyright claims. The court found no violation of the Lanham Act, as "Funky Soul" was credited to "David Batiste and the Gladiators," and determined that David had transferred any interest for royalties, negating claims under the Louisiana Unfair Trade Practices Law (LUTPL). The Batistes did not provide evidence that the defendants were aware of any interest held by Paul and Michael Batiste. The court ruled against David Batiste’s conversion and misappropriation claims due to his prior transfer of rights to Bolden but allowed Paul and Michael's claims to proceed as they needed only to prove possession of their property.
Subsequently, the court dismissed the Batistes' claims against Featherstone for lack of personal jurisdiction and their remaining state-law claims under 28 U.S.C. § 1367. The Batistes appealed, contending the court erred in granting summary judgment on their claims and asserting Featherstone had sufficient minimum contacts with Louisiana. Defendants cross-appealed, claiming the court abused discretion in dismissing the Batistes' surviving state-law claims without prejudice. The Batistes argued that the district court incorrectly found their copyright infringement claims invalid, asserting that the defendants’ use of "Funky Soul" was unauthorized under the 1970 agreements and that these contracts were invalid due to David Batiste's lack of recollection and the minors' lack of authorization at the time.
The Batistes assert that the 1993 contracts executed by Bolden do not authorize the defendants' use of a digital sample from "Funky Soul," even if the 1970 contracts permitted licensing. They argue that either (1) "So On" is a "derivative work," meaning the 1993 contracts only permit sharing profits from new material added by Cordes, or (2) the contracts classify "So On" as a "joint work," which would merge Cordes's contributions with Bolden's rights and render the contracts invalid under copyright law, specifically referencing the "Twelfth Street Rag" doctrine.
The court reviews summary judgment de novo, indicating that it will apply the same criteria as the district court. Summary judgment is appropriate when there is no genuine issue regarding any material fact, allowing the moving party to obtain judgment as a matter of law. The moving party initially must demonstrate the absence of evidence supporting the nonmoving party's claims, after which the nonmoving party must present specific facts showing a genuine issue exists.
In this case, the court finds that the Batistes have not shown a genuine issue of material fact regarding the validity of the contracts. They failed to provide evidence that the 1970 contracts are invalid, and David Batiste's lack of memory about signing them does not raise a material issue. Furthermore, David Batiste granted Bolden comprehensive rights to the musical composition, including copyright and licensing rights, effectively undermining the Batistes' claims. Consequently, the court agrees with the district court's conclusion that defendants are entitled to summary judgment on these copyright claims.
A grant of rights in a copyright context is deemed sufficiently broad to encompass the licensing of a digital sample of "Funky Soul." Relevant case law, such as Boosey, Hawkes Music Publishers, Ltd. v. Walt Disney Co., and Maljack Prods. Inc. v. GoodTimes Home Video Corp., supports the interpretation that broad language in contracts can extend to future technologies and formats. The claims by Paul and Michael Batiste regarding David Batiste's authority to enter into 1970 contracts are considered irrelevant to their copyright infringement allegations based on authorized uses by their brother, as established in Quintanilla v. Texas Television Inc. A co-owner of a copyright cannot infringe upon the rights of another co-owner, nor can they sue each other for infringement, as cited in Oddo v. Ries and Cortner v. Israel. An authorization from one co-owner serves as a defense against infringement claims by another co-owner.
The court also dismissed the Batistes' challenges to the validity of 1993 contracts with Bolden and Gee Street/MCA, determining that these contracts do not establish a "joint work" but rather recognize Bolden's retention of copyright in "Funky Soul." The court found the contracts to be licenses for use, not mere profit-sharing agreements. Consequently, there was no genuine dispute of material fact regarding the defendants' authorized use, leading to a summary judgment in their favor on the copyright claims.
Regarding the Lanham Act claims, the Batistes alleged that the defendants "mutilated" "Funky Soul," constituting "reverse passing off" under 15 U.S.C. § 1125(a). They argued for a moral right to attribution based on Gilliam v. American Broadcasting Cos., asserting that the defendants' licenses did not permit alterations to their works and that their contributions to "So On" were inadequately credited. The case of Gilliam involved authors seeking to prevent alterations to their works, highlighting the importance of proper attribution.
The Second Circuit issued an injunction against ABC's broadcasts, determining that the group demonstrated a strong likelihood of success on their claims that ABC's editing of Monty Python's work exceeded its licensing agreement. The court ruled that the alterations constituted an actionable mutilation under the Lanham Act, rooted in the moral rights concept allowing artists to maintain attribution in the original form of their work. However, despite this conclusion, the court upheld the defendants' summary judgment as the Batistes failed to prove any genuine consumer confusion regarding the use of a digital sample of "Funky Soul" in "So On," or the attribution of co-authorship. The Batistes’ claims regarding improper exclusion from album liner notes were also deemed insufficient to establish consumer confusion.
Regarding the Batistes' state-law claims of unfair trade practices, conversion, and misappropriation, the court affirmed that these claims were subject to a one-year prescriptive period under Louisiana law. The court found that the Batistes were aware of the unauthorized use of "Funky Soul" by July 1993, but they did not initiate their lawsuit until March 1995, thus barring their claims due to the expiration of the prescriptive period.
The Batistes assert that a previous ruling in Songbyrd, Inc. v. Bearsville Records, Inc. established that claims regarding the misappropriation of master recordings are not subject to a one-year prescriptive period. They argue their case concerns ownership of master rights and that their state law claims are shielded from prescription by equitable tolling due to defendants' refusal to provide information since mid-1993. However, the court clarifies that the Songbyrd ruling pertained to a "revindicatory action" for the return of physical property, while the Batistes' claims involve damages for misappropriation of a sound recording, categorizing them as "personal actions" subject to the one-year limit. The court rejects the Batistes' equitable tolling argument, noting they were aware of the facts underlying their claims more than a year before filing suit. Consequently, the court affirms the district court's summary judgment in favor of the defendants on the Batistes' claims of unfair trade practices and misappropriation.
Regarding pendent jurisdiction, after granting summary judgment on most claims, the district court permitted the Batistes to voluntarily dismiss remaining claims without prejudice. Defendants contest this dismissal, arguing it was an abuse of discretion given the extensive resources spent on litigation and discovery. They claim these remaining claims are also time-barred, as the Batistes acknowledged knowing the relevant facts over a year prior to their filing.
A district court's decision to decline jurisdiction over pendent state-law claims is reviewed for abuse of discretion, guided by statutory provisions under 28 U.S.C. § 1367(c) and relevant Supreme Court precedents. While the general rule favors declining jurisdiction when federal claims are dismissed, this is not absolute. The court must consider factors such as judicial economy, convenience, fairness, and comity, particularly in light of the specific circumstances of the case.
In this instance, the remaining state-law claims did not involve novel or complex issues, suggesting that remand may not be warranted. Additionally, judicial economy and fairness favored retaining jurisdiction, especially since the case had been pending for nearly three years with a trial scheduled shortly after the dismissal. The district court's prior summary judgment on some state-law claims and the absence of difficult legal questions led to the conclusion that it abused its discretion by refusing to retain jurisdiction over the remaining claims.
The trial court's decision to dismiss the Batistes' claims just before trial, after extensive litigation involving 23 volumes of records, numerous depositions, and significant discovery, was deemed an abuse of discretion. The elimination of the sole federal-law claim early in the proceedings provided the court with a valid reason to decline jurisdiction. However, the substantial judicial resources already invested in the case indicated that the district court had become familiar with the merits of the Batistes' claims. This familiarity suggested that continuing proceedings in the district court would enhance judicial efficiency and fairness. Consequently, the appellate court reversed the dismissal of the Batistes' conversion and misappropriation claims, remanding the case for judgment in favor of all defendants except Bolden. The appellate court affirmed the district court's summary judgment in favor of the defendants on other claims and noted inconsistencies in the lower court's orders regarding subject matter jurisdiction and standing, ultimately finding no merit in the defendants' arguments regarding these issues.
The district court denied the defendants' motion to dismiss, affirming that the Batistes can assert copyright infringement claims as beneficial owners of Bolden's registered copyright under 17 U.S.C. § 501(b). A copyright's legal or beneficial owner can file an infringement action while holding that right. The court's ruling on summary judgment did not include Bolden as he did not join the defendants' motion or file one independently, thus leaving the Batistes' claims against Bolden intact. Under 28 U.S.C. § 1367(c), a district court has discretion to decline supplemental jurisdiction under certain conditions, but the Batistes did not support their appeal regarding the dismissal of Featherstone for lack of personal jurisdiction, leading to its abandonment. Bolden did not appeal the dismissal of claims against him.
The "Twelfth Street Rag" doctrine, which allowed the assignee of a musical work to create new ownership interests in a joint work, was overruled by Congress in 1976, requiring mutual intent for contributions to be merged into a joint work. The Batistes challenged the validity of the 1993 contracts, claiming infringements occurred before licenses were issued and that the defendants assigned contract benefits without Bolden's consent. However, evidence indicated that the necessary licenses were executed prior to the album's release, and any writing requirement for assignments was waived by Bolden's conduct. Under 15 U.S.C. § 1125(a), using misleading designations in commerce can lead to civil liability for causing confusion about affiliations or sponsorships.
