By Robert B. Barnett Jr., J.D.
Liability was established on infringement of 18 sound recordings of Christmas songs, but questions remained on infringement of a script for an act that accompanied the songs.
A company that performs Christmas caroling was entitled to partial summary judgment on copyright infringement against a competing Christmas caroling company because the first company established as a matter of law that it held the copyright in the sound recording of 18 Christmas songs as part of its caroling act and that the competitor copied those recordings when it used the songs to train its performers, a Texas federal district court has ruled. The court also, however, denied the first company summary judgment on a related infringement claim involving the accompanying script for the act because genuine issues of material fact existed about who authored the script. The court also declined to grant summary judgment on damages and a permanent injunction because the allegations were insufficient to support summary judgment on those issues, at least in part because of the different rulings on copyright in the recordings and copyright in the script (Goode Time Productions, L.L.C. v. Just, September 14, 2020, Jordan, S.).
Background. Goode Time Productions, L.L.C., founded in 2006 in Los Angeles, produces live, musical, holiday-themed caroling shows around the country. It hires independent contractors, dresses them in Victorian-era clothing, and gives them a script, which includes songs to sing, as well as stories and jokes that introduce the songs. In 2012, Good Time expanded its show into the Dallas area. The next year, one of the independent contractors hired for the show, Joel Just, formed his owned caroling company, called Uptown Carolers and solicited business in the Dallas area. Just used the same sound recordings and scripts he received from Goode Time for training purposes to train his singers.
Upon learning that Just had formed his own company and that he was using the same recordings and script to train his carolers, Goode Time tried without success to get Just to cease and desist. Goode Time next applied and obtained copyright registration in its sound recordings, compilation of songs, and script. It then sued Just for copyright infringement. After discovery, Goode Time filed a partial summary judgment motion, asking the court to find Just liable for infringing 18 sound records and the script. Goode Time also asked for damages, disgorgement of Just’s profits, and a permanent injunction to prevent Just from infringing the copyrights.
Copyright validity. The court rejected the Dallas caroler’s argument that the copyright registration was invalid because some information in it was inaccurate. The Copyright Office had allowed the Los Angeles caroler to amend its registration to correct errors, which was an indication that the Office considered the registration to be valid. The only legitimate dispute involved the claim in the application that the works were unpublished. Because the Los Angeles caroler had given the scripts to independent contractors to learn their routines, the scripts could be considered published within the meaning of the Copyright Act. Even if published, however, the registration was still valid, unless the Los Angeles caroler knowingly misled the Copyright Office. The court concluded that no such evidence existed, and it deemed the registration valid for purposes of these claims.
Infringement. Having established a valid copyright, the next hurdle was establishing that the Dallas caroler copied the works. Copying can be established by showing that the Dallas caroler had access to the work and that the infringing work was significantly similar to the copyrighted work. At this point, the court separated the infringement question for the sound recordings from the infringement question for the scripts.
Sound recordings. The Dallas caroler admitted that he used copies of the sound recordings to train his performers. Thus, copying had been established. As for whether a valid copyright existed in the sound recordings, the court noted the difference between a copyright in the songs themselves and a copyright in a particular recording of the songs. The voices of the two individual owners of the Los Angeles carolers were on the recordings, together with some of the independent contractors. Thus, at the very least, those two owners were co-authors of the sound recordings. The evidence established that they transferred their copyright interests in the sound recordings to the company. Thus, no dispute existed that the sound recordings copyright was owned by the Los Angeles carolers.
All of the Dallas carolers’ arguments against copyright legitimacy were rejected. The fact that the Los Angeles carolers did not own the copyright on the underlying songs was irrelevant. They were suing based on a copyright in the sound recordings, not a copyright in the songs. Furthermore, even though they had copyrights in 75 sound recordings, they were allowed to pursue claims on 18 individual recordings. They had the right to pick and choose. They were not required to pursue claims on all 75 copyrights. And, finally, their claims did not fail because the independent contractors’ voices were also on the recording. Any joint copyright owner can pursue an independent infringement claim. As a result, the court granted summary judgment to the Los Angeles carolers for copyright infringement on the sound recordings.
Script. The result was different for the script, even though the Dallas carolers used the script for training and in performances and the only change they made was to insert the name of their company for the name of the Los Angeles company. The problem was authorship. Without knowing who authored the script, the court could not conclude as a matter of law that the Los Angeles carolers owned the copyright in the script. The court could not discern from the evidence who authored the script. The owners’ own deposition testimony was inconclusive. They could not remember who actually wrote the script or when it was written. They only knew that they had been using it for years. Further confusing the issue, some of the script pages contained a name at the top that was different from the name of either of the company owners. The court did not conclude that the two owners were not the authors. It only concluded that it could not as a matter of law declare that they were. Genuine questions of authorship remained, which meant that the summary judgment motion on the script was denied because the existence of a valid copyright in the script could not be determined.
Damages. The Los Angeles carolers asked for actual damages. The request, the court said, was too vague. For example, the Los Angeles carolers said in their complaint that actual damages "cannot be adequately calculated." As for profit disgorgement, the Los Angeles carolers identified the amount that the Dallas carolers had made during the infringement period, but they failed to identify how much of it was attributed to sound recording infringement and how much to the script infringement. Therefore, given that the script infringement question was still open, the Los Angeles carolers were not entitled to summary judgment on profit disgorgement.
Injunction. The Los Angeles carolers had asked for summary judgment on a permanent injunction preventing the Dallas carolers from infringing the copyright. Once again, however, the allegations lacked sufficient details. For example, the Los Angeles carolers alleged reputational harm, but they failed to explain the nature and extent of the harm, or how this harm was irreparable. Also, once again, the allegations failed to establish a causal connection between the injuries and the sound recordings specifically. In addition, given that the damages had yet to be determined, the court had no way of determining whether those damages were an adequate remedy for the injuries. As a result, the Los Angeles carolers were entitled to summary judgment on the question of a permanent injunction.
The court, therefore, granted the partial summary judgment in part and denied it in part. The Dallas carolers were guilty of copyright infringement on the 18 sound recordings. On all other issues, the motion was denied.
This case is No. 4:19-cv-00058-SDJ.
Attorneys: James Henry Creedon (Creedon PLLC) for Goode Time Productions, LLC. Wendy B. Mills (WB Mills, PLLC) for Joel Just d/b/a Uptown Carolers.
Companies: Goode Time Productions, LLC; Uptown Carolers
MainStory: TopStory Copyright GCNNews TexasNews
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