By John W. Scanlan, J.D.
Although the length of the sample was about three seconds, a jury could find substantial similarity between the original recording and the allegedly infringing works due to the musician’s signature voice and unique composition.
A musician alleging that a record company had sampled without his knowledge a portion of one of his recordings and reproduced it in songs that it subsequently published and licensed for use in various media may bring state infringement, misappropriation, and unfair competition claims under California law against the record company, the U.S. District Court for the Central District of California ruled. However, even though he alleged the infringements dated back to 1991, he could only maintain claims that accrued within the applicable limitations periods because he waited more than five years after discovering the alleged infringement before filing the present case (Johnson v. UMG Recordings, Inc., October 23, 2019, Wright, O.).
Syl Johnson, through his business Twinight Records, produces, distributes, and sells recordings. In 1968, he recorded the song "I Feel An Urge." A segment of this recording was sampled in 1991 by UMG Recordings, which reproduced, distributed, and licensed it on other tracks that were used in movies, music videos, video games, and other media. Johnson had not authorized UMG to reproduce, distribute, or license the sample. Johnson stated that he discovered in 2013 that his recording had been sampled when he was informed by a former disc jockey that he recognized Johnson’s voice. Johnson brought an action in the Northern District in Illinois in 2015 and another suit in the Middle District of Tennessee of Tennessee in 2017 before bringing the present copyright infringement action in the Central District of California alleging three state law claims. UMG moved to dismiss, arguing that the claims were time-barred by the applicable statutes of limitation and that UMG’s alleged copying was not actionable.
Statutes of limitations. Johnson could not maintain infringement claims predating the applicable statutes of limitations because the limitations periods were not tolled after he discovered the infringing uses in 2013. He stated that the first act of infringement occurred in 1991 and argued that UMG was liable for every infringing act since that time because it continued to sell recordings with the unlicensed sample. However, under California law, the continuing violation doctrine does not toll the limitations period for misappropriation claims, or violations of the state unfair competition law without an allegation of a series of small harms. Johnson also argued that the delayed discovery rule should apply as he was unaware of any infringement until informed by the disc jockey in December 2013 because he did not listen to rap or "gangsta rap" music for religious reasons. The court pointed out, however, that he nevertheless waited until March 28, 2019, to file his complaint, more than five years after becoming aware of the potentially infringing uses. As a result, he could bring claims for misappropriation, state copyright infringement, and violations of the unfair competition law only for claims that accrued up to two, three, and four years respectively before the filing date of his complaint.
Furthermore, the fraudulent concealment doctrine also did not toll the statute of limitations beyond December 2013. He argued that UMG fraudulently prevented him from discovering the infringing uses by omitting any credit to him or his recording on any label copy. However, even if this doctrine applied, the statutes of limitations would have begun running again in December 2013 when he became aware of the infringing uses.
Finally, Johnson did not satisfy the "good faith and reasonable conduct" element necessary to establish the application of the doctrine of equitable tolling. He waited a year and a half after becoming aware of the infringing use to file his first case, and after that was resolved waited another eleven months to file a second. The court observed that he filed the second case in the Middle District of Tennessee despite being informed by the district judge in the Northern District of Illinois that the Central District of California would be the proper venue for the case, indicating a desire to engage in forum shopping. As a result, he lacked good faith.
Substantial similarity. At this state of the litigation, Johnson sufficiently alleged that UMG’s use of the sample could constitute infringement because the infringing works could show "pronounced similarities of similar portions" to the original recording. UMG argued that its use was de minimis because the sample consisted of only a 3.094-second portion of the bridge of Johnson’s two-and-a-half-minute recording. Johnson argued that the sample, which was repeated during the allegedly infringing track, consisted of his distinctive vocal "Ohh," followed by a fast-paced drum roll, a high note on a saxophone, and his singing "Yeah." Finding that a jury could conclude that the two pieces were substantially similar because of his signature voice and unique composition, the court declined to dismiss the claim despite the minimal amount of time used.
Fair use. The court declined to accept UMG’s fair use defense at this stage of the litigation. While disagreeing with Johnson that California copyright law does not provide for fair use, the court found that Johnson had alleged that UMG had used the unlicensed sample for its commercial benefit, which the court would not consider a fair use.
This case is No. 2:19-cv-02364-ODW-SS.
Attorneys: Donald Kenneth Wilson (Law Offices of Donald K. Wilson) for Syl Johnson a/k/a Sylvester Johnson d/b/a Twinight Records, Inc. Robert A. Jacobs (Manatt Phelps and Phillips LLP) for UMG Recordings, Inc.
Companies: Twinight Records, Inc.; UMG Recordings, Inc.
MainStory: TopStory Copyright CaliforniaNews
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