IP Law Daily Record company pleads infringement claims over James R.’s performance on VH1 show
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Wednesday, December 5, 2018

Record company pleads infringement claims over James R.’s performance on VH1 show

By Robert Margolis, J.D.

Music producer Luis Vargas and his recording company Bully Sound Records adequately pleaded that recording artist James Rosario (known as "James R.") infringed their copyright in the song "Bad Girl" when he changed its name to "Bah Gurl" and performed it on the VH1 show "Love and Hip Hop" without permission, the federal district court in New York City has decided. The court denied Rosario’s motion to dismiss that claim, although it dismissed Lanham Act and state-law claims for unfair competition and state-law tortious interference claims against Rosario, VH1, and others involved in the production of the show, determining that they were preempted by the Copyright Act (Vargas v. Viacom International, Inc., November 30, 2018, Stanton, L.).

Vargas is a talent manager, promoter, musician, and music producer, while Bully Sound is a record company, music publisher, and artist management company. Rosario is a recording artist who entered into a Music Publishing (Songwriter) Agreement with Bully Sound, with Rosario as the "Writer" assigning to Bully Sound as the "Publisher, " "each and every right and interest of every kind," including "all copyrights and renewals and extensions" of any compositions under the Agreement. The Agreement further states that "each and every Composition" written by Rosario "is and shall at all times be" Bully Sound’s "sole and exclusive property." In addition, Bully Sounds is granted "the sole and exclusive right" to "perform the Compositions publically for profit." Finally, the Agreement grants Bully Boy exclusive right to secure copyright registration for any compositions by Rosario." A later Addendum to the Agreement extends rights and interests assigned under it to "any Album and Album Project Masters" created by Rosario.

Pursuant to that Agreement, Bully Sound owns the copyright to the song, "Bad Girl," performed by Rosario. The registration, dated May 2017, is in Vargas’s name, but he assigned his rights to Bully Sound nunc pro tunc. When Vargas first sought to register, Broadcast Music, Inc., told him that the song had already been registered by Rosario as sole owner. Bully Sound’s copyright attorney successfully disputed the registration and was able to change it to Bully Sound. At that time, the relationship frayed, with Rosario accusing Vargas of trying to steal his music. He sought to end the relationship, but Bully Sound would not agree to release him from the Agreement.

Vargas subsequently learned that Rosario uploaded an identical copy of the recording of "Bad Girl" to several online music distributors, but changed the title to "Bah Gurl," thus diverting income from the recording’s sales from Bully Sound to Rosario. Bully Sound issued takedown notices to the online distributors. Then, in November 2017, the recording was featured on VH1’s "Love and Hip Hop," in which Rosario is shown filming a music video for it, though its title again is changed from "Bad Girl" to "Bah Gurl." In a subsequent episode, Rosario is shown hosting a video release party to debut the music video. Both episodes prominently display the "Bah Gurl" title.

Vargas and Bully Sound then sued Rosario, Viacom International, Inc. a/k/a VH1 and others involved in the production of the show for copyright infringement, as well as false designation of origin/unfair competition under the Lanham Act and New York law, and state common law.

Copyright infringement. The defendants did not dispute that the Agreement grants Bully Sound ownership of the copyrights to the compositions of "Bad Girl," but argued that ownership of copyrights in any sound recordings were not similarly assigned under that Agreement. While copyright separates the musical composition from the physical embodiment of a particular performance of the composition, the court found that Vargas and Bully Sound adequately alleged that the Agreement and its Addendum covered both.

The court reasoned that the terms "Albums" and "Album Project Masters," though not defined in the Agreement or Addendum, should be interpreted as meaning embodiments of performances of a composition. Thus, reference to "Album Project Masters" "seems to refer to sound recordings or some similar form of physical embodiment," according to the court.

Defendants also argued that the disparity between the registration in Vargas’s name and the fact that in the lawsuit Bully Sound is alleged to be the copyright owner somehow invalidates the registration. But the court noted that Vargas was free to assign his interest to Bully Sound through a nunc pro tunc assignment, which effectively gave Bully Sound ownership. But even if there were some error, that would not invalidate the registration, the court held; only if the claimed error is committed knowingly with the intend to defraud or otherwise cause prejudice would such an error be reason to invalidate.

False designation/unfair competition. The court granted the defendants’ motion as to the Lanham Act and state law false designation of origin and unfair competition claims that were based on the publication of "Bad Girl" under the false title "Bah Gurl." These claims were preempted by the Copyright Act, the court held. The attempted "end run around" copyright failed, according to the court, under the teaching of Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). That case held that the Lanham Act does not extend to infringing acts of publishing and broadcasting a "communicative product" that is protected by copyright law, since the Lanham Act protects the producer of tangible goods, not the author of an idea or a communication embodied in the goods.

The court also rejected Vargas and Bully Sound’s argument that advertising the song title "Bah Gurl" was actionable unfair competition. They did not own a registered trademark in the song title "Bad Girl," and it is not inherently distinctive or with secondary meaning.

Tortious interference. The court also held that the Copyright Act preempted the tortious interference claim against Viacom and the other defendants involved in producing Love and Hip Hop. As the court noted, it is well-settled that such claims that are based on publication of a work protected by the Copyright Act are preempted.

This case is No. 1:18-cv-00474-LLS.

Attorneys: Alan Martin Sack (Sack IP Law PC) for Luis Vargas and Bully Sound Records, Inc. Brett Thomas Perala (Rosenberg & Giger, PC) for Viacom International, Inc. a/k/a VH1 Networks, New Pop Culture Productions, Inc., Monami Entertainment LLC and NFGTV, Inc. a/k/a Eastern.

Companies: Bully Sound Records, Inc.; Viacom International, Inc. a/k/a VH1 Networks; New Pop Culture Productions, Inc.; Monami Entertainment LLC; NFGTV, Inc. a/k/a Eastern

MainStory: TopStory Copyright Trademark NewYorkNews

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