“Take a Dive”
William Adams, et al. [“Black Eyed Peas”]
“I Gotta Feeling”
Comment by Charles Cronin
“I Gotta Feeling” this claim of infringement should go nowhere … along with that of another recent claim (Batts v. Adams) against “Black Eyed Peas”… and that plaintiff Pringle would be advised to “Take a Hike” – if not a “Dive” – out of the courthouse.
On 29 January 2011 U.S. District Judge Josephine Tucker denied defendants’ motion to dismiss the case, noting the extremely low standard for a claim to survive a challenge of dismissal — namely that a court must accept as true all material allegations made in the complaint, and that the plaintiff’s allegations indicate that there exists a mere possibility that defendants acted unlawfully. Perhaps the only way for wealthy defendants like “Black Eyed Peas” to curtail annoying predatory attempts like these is not to throw plaintiffs a settlement bone (indeed, Pringle’s attorneys actually claim that prior settlements by “Black Eyed Peas” indicate an ongoing record of unlawful conduct) but rather to hold firm – and seek attorney fees.
In March of 2012, however, Judge Tucker dashed any hopes she may have built as to sympathy towards plaintiff’s infringement allegations. Not only did the court grant the defendants’ motion for summary judgment, but it also sanctioned the plaintiff for having deliberately corrupted evidence on which he based his claim. In an extraordinary demonstration of chutzpah the plaintiff apparently not only attempted to falsify the date of creation of his work that he claimed plaintiffs infringed, but, as the court suggests, he also copied defendants’ work in creating the version of his song for which he attempted to obtain a copyright registration, and on which he based his infringement claim.
The audio clip above, of the plaintiff’s work, is the doctored version of his song, which he claimed the defendants copied.
Opinion by Judge Tucker
Before the Court is a Motion for Summary Judgment filed by Defendants David Guetta, Frederic Riesterer, and Shapiro, Bernstein & Co., Inc. (collectively, “Moving Defendants”) (Mot., Doc. 159.) Moving Defendants assert several bases for summary judgment. Moving Defendants also assert that Pringle’s claims should be dismissed as a sanction for spoliation of evidence. Plaintiff Bryan Pringle (“Pringle”) filed an Opposition on December 19, 2011. (Opp’n, Doc. 195.) Moving Defendants filed a Reply on January 9, 2012. (Reply, Doc. 222.) Having heard oral argument and read and considered the parties’ papers, the Court GRANTS Moving Defendants’ Motion for Summary Judgment. The Court also concludes that dismissal is an appropriate sanction for Pringle’s willful spoliation of evidence.
In 1998, Pringle wrote and recorded a song entitled “Take a Dive.” (Statement of Additional Facts (“SAF”) ¶ 115, Doc. 196.) He registered a claim for “Take a Dive” and several other original songs he wrote and recorded by submitting a CD entitled Dead Beat Club: 1998 to the United States Copyright Office, and the Register of Copyrights issued a Certificate of Registration for Dead Beat Club: 1998 on April 29, 1998. (SAF ¶¶ 117–18.) Pringle then allegedly made several derivative versions of “Take a Dive,” including a dance version (“ ‘Take a Dive’ (Dance Version)”) that is central to this case. (SAF ¶ 119.) “Take a Dive” (Dance Version) includes an eight-bar “guitar twang sequence” that is not present in the original version. (SAF ¶¶ 120–21.) After he allegedly created “Take a Dive” (Dance Version) in 1999, Pringle backed up his creation file onto an NRG image file. (SAF ¶ 128.) The NRG file is a disc image file, which contains a series of separate sound files for each of the individual instruments that appear in “Take a Dive” (Dance Version). (Statement of Uncontroverted Facts (“SUF”), ¶ 68, Doc. 160.) Pringle claims that in late 2000, the music equipment and hard drives he used to create “Take a Dive” (Dance Version) were stolen. (SUF ¶ 67.)
In 2009, Defendant The Black Eyed Peas released the song “I Gotta Feeling.” (SAF ¶ 138.) From August 21 to September 8, 2009, Defendants made available on a website named Beatportal.com the “stems” or component parts of “I Gotta Feeling,” including the guitar twang sequence. (SUF ¶¶ 24–25; SAF ¶ 194.) In January 2010, Pringle upgraded to a new hard drive (the “2010 Hard Drive”). (SAF ¶ 196.) Then, in February 2010, Pringle allegedly heard “I Gotta Feeling” and began to investigate his infringement claim. (Pringle Tr. 63:16–19, Dickstein Decl., Ex. E, Doc. 161–5.) When Pringle first heard “I Gotta Feeling,” he allegedly believed that the song infringed his “Take a Dive” (Dance Version). (SAF ¶ 139.)
On July 23, 2010, before this action was filed, counsel for the Black Eyed Peas sent a lengthy email to Pringle’s counsel, expressing concern about the creation dates of two CDs—“Take a Dive” and “Take a Dive” (Dance Version)—sent to her on May 21, 2010. (Dickstein Decl., Ex. K, Doc. 161–11.) The email specifically stated:
Given that you have advanced a claim on [Pringle’s] behalf I am sure you have already advised Mr. Pringle of his duty to preserve all computer records. Out of caution, before Mr. Pringle is confronted with the topic of potential altered dates etc [sic], it is likely appropriate for you to have an independent forensic computer person image his entire hard drive etc. to capture and preserve everything on his system before you confront him. It will be something we will necessarily request in discovery should this case ever reach a filed action.
[ … ]
On behalf of my clients’ [sic], as I am sure you understand, I have to formally make a request for preservation of evidence. Please consider this email my formal request for preservation of evidence.
(Id.) The next day, Defendants re-sent their preservation request through formal correspondence. (Id., Ex. J.) Then, on July 28, 2010, Defendants’ counsel reiterated their request for preservation of evidence of Pringle’s computer files, and again expressed concern about “serious issues of whether that date [of creation] was actual or fabricated.” (Id., Ex. K.) In a response email, Pringle’s counsel wrote “[w]e are preserving evidence, of course….” (Id.)
On October 28, 2010, Plaintiff filed this action, and on November 15, 2010, Pringle submitted a copyright registration application for “Take a Dive” (Dance Version), seeking registration for both the sound recording and the musical composition embodied in the guitar twang sequence, the only new material added to “Take a Dive” (Dance Version). (SUF ¶ 35.) The United States Copyright Office registered the sound recording in “Take a Dive” (Dance Version), but denied Pringle’s application to register a copyright in the musical composition of the guitar twang sequence “[b]ecause [the] work does not contain enough original musical authorship to be copyrightable.” (SUF ¶ 36; SAF ¶ 204.)
Pringle filed a First Amended Complaint (“FAC”) on November 19, 2010, asserting a claim for copyright infringement against all Defendants. (FAC, Doc. 9.) On November 23, 2010, Defendants filed an expert report explaining that “a common method for fraudulently ‘backdating’ the date and time stamp for files … can be as simple as changing the clock on your computer” and that it would therefore “be vital to review the original computer [that] managed the burning of the CD in the first instance.” (Laykin Decl. ISO Opp’n to TRO, ¶ C4(i),(o), Doc. 22–2.)
On December 21, 2010, Pringle delivered to his expert, David Gallant, a CD–ROM hand-marked “PROMO PHOTOS / 1999 ENSONIQ.NRG FILES” (“the NRG Disc”). (Gallant Decl. ¶ 4, Doc. 193.) This CD contained 134 digital photographs, the files for which were dated September 8, 1999, and the NRG files dated August 22, 1999.(Id. ¶ 5(a)).
In January 2011, Pringle disposed of the 2010 Hard Drive, although he cannot recall whether he threw it away or sent it back to the manufacturer. (Pringle Tr. 33:23–37:13.) Before disposing of the hard drive, Pringle made a copy of “relevant files,” but did not create a backup copy of the entire hard drive.(Id. 49:8–20, 50:16–51:4.)
On February 14, 2011, Defendants demanded inspection of Pringle’s computer equipment used from 2009 to the present. (Dickstein Decl., Ex. N at 3.) On February 18, 2011, Defendants stated in the Joint 26(f) Report that “they ha[d] been unable to prepare a comprehensive discovery plan because Plaintiff’s counsel refused to engage in a meaningful discussion of the nature of extent of Mr. Pringle’s electronically stored information (ESI).” (Joint 26(f) Report at 7, Doc. 110.) The Report further stated that “Mr. Pringle’s ESI will likely play a crucial role in discovery in this action, as it goes directly to the threshold issues of Plaintiff’s ownership of a valid copyright, including, the dates and manner of Plaintiff’s alleged creation of ‘Take a Dive’ and ‘Take a Dive’ Derivative….” (Id.)
On July 8, 2011, Pringle’s counsel wrote in a letter: “To the extent you seek metadata associated with the creation of any sound recording by Mr. Pringle, that would require an inspection of Mr. Pringle’s computer hard drive, which we have offered to provide for inspection at the offices of our computer expert.” (Dickstein Decl ., Ex. M at 21.) Then, on July 27, 2011, Defendants’ counsel wrote to Pringle’s counsel to arrange inspection of “Mr. Pringle’s computer hard drive(s) that he had used from 2009 to the present, and all backups thereof.” (Id., Ex. F at 13.) Pringle’s counsel responded that none of the hard drives Pringle had used in 2009, 2010, or 2011 were available. (Id., Ex. F. at 9–10.) The 2009 hard drive was replaced as part of a practice of upgrading hard drives every six to twelve months, and the hard drive in use in 2011 (the “2011 Hard Drive”) had been sent to Western Digital for repair in July 2011. (Id.) Although Pringle copied data from the 2011 Hard Drive and provided it to Mr. Gallant, his expert, some of the files were unavailable because they were corrupted. (Gallant Decl. ¶ 13, Doc. 193; Pringle Decl. ¶ 250, Doc. 198.) At the time of inspection by Defendants’ expert, Plaintiff’s counsel only offered to make the NRG Disc and an ASR–10 keyboard available. (Id .) Notably, Pringle’s counsel did not explain what had happened to the 2010 Hard Drive. (Dickstein Decl., Ex. F at 1.)
On November 17, 2011, Moving Defendants moved for summary judgment on several bases. Moving Defendants also assert that Pringle’s claims should be dismissed as a sanction for spoliation of his Hard Drives.
III. SUMMARY JUDGMENT
a. Legal Standard
In deciding a motion for summary judgment, the Court must view the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in that party’s favor. Anderson v.. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). Summary judgment is proper “if the [moving party] shows that there is no genuine dispute as to any material fact and the [moving party] is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56. A factual issue is “genuine” when there is sufficient evidence such that a reasonable trier of fact could resolve the issue in the non-movant’s favor, and an issue is “material” when its resolution might affect the outcome of the suit under the governing law. Anderson, 477 U .S. at 248.
The moving party bears the initial burden of demonstrating the absence of a genuine issue of fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). “When the party moving for summary judgment would bear the burden of proof at trial, it must come forward with evidence which would entitle it to a directed verdict if the evidence went uncontroverted at trial.” C.A.R. Transp. Brokerage Co. v. Darden Rests., Inc., 213 F.3d 474, 480 (9th Cir. 2000) (citation and quotation marks omitted). The burden then shifts to the non-moving party to “cit[e] to particular parts of materials in the record” supporting its assertion that a fact is “genuinely disputed.” Fed.R.Civ.P. 56(c)(1); see also In re Oracle Corp. Sec. Litig., 627 F.3d 376, 387 (9th Cir. 2010) (“non-moving party must come forth with evidence from which a jury could reasonably render a verdict in the non-moving party’s favor”).
In paragraph 30 of the FAC, Pringle defines “Take a Dive” to refer to “the derivative version [“Take a Dive” (Dance Version) ] .” (FAC ¶ 30.) Thereafter, Pringle’s FAC asserts that “Defendants … gained access to Plaintiff’s copyrighted song ‘Take a Dive,’ and then subsequently sampled and copies additional, substantial original elements of ‘Take a Dive,’ without Plaintiff’s permission, when they wrote, recorded, performed and made derivative works of their song ‘I Gotta Feeling.’” (FAC ¶ 62.) Therefore, from the FAC, it appears that Pringle alleges both sampling and other copyright infringement of “Take a Dive” (Dance Version).
However, in his declaration in opposition to summary judgment, Pringle states:
I do not contend, nor have I ever contended, that the Defendants sampled the “guitar twang sequence” for “I Gotta Feeling” directly out of the fully played version of “Take a Dive” (Dance Version) presented to the Court. Rather my claim, is that the Defendants had access to my music and manipulated the samples to which they had access, to achieve the “guitar twang sequence” that is heard in the finished version of “I Gotta Feeling.”
I had many derivative versions of “Take a Dive” which contained the “guitar twang sequence” soloed out in the song, and provided samples of the same directly to. [sic] [Defendants] Guetta and Garraud, at least as far back as 1999 to 2003.
(Pringle Decl. ¶¶ 142–43.) Therefore, it is unclear whether Pringle asserts that “I Gotta Feeling” infringes “Take a Dive”, “Take a Dive” (Dance Version), or some other undisclosed “derivative” version of the song. However, “no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made….” 17 U.S.C. § 411(a). “Copyright registration is not a prerequisite to a valid copyright, but it is a prerequisite to a suit based on a copyright.” Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1211 (9th Cir. 1998) (citation omitted). Here, Plaintiff has presented evidence of registration of only two songs: “Take a Dive” and “Take a Dive” (Dance Version). Accordingly, these are the only two works on which Pringle’s copyright suit can be based. Therefore, to the extent Pringle claims copyright infringement as to an unidentified “derivative” version of “Take a Dive,” his claim fails.
i. Take a Dive (Dance Version)
The Court concludes that Pringle’s registration of “Take a Dive” (Dance Version) is invalid, and he therefore lacks standing to sue for infringement of that work. “In order to obtain a copyright registration, an applicant must deposit as a part of his application a ‘copy’ or ‘copies’ of the work.” Kodadek, 152 F.3d at 1211 (citing 17 U.S.C. § 408(b)(1) and (2)). The Ninth Circuit “[has] stated that the registration deposit requirement permits ‘bona fide copies of the original work only….” Kodadek, 152 F.3d at 1211 (citation omitted). This is because “[t]he Copyright Act does not contemplate the copyrighting of a now non-existent original on the basis of a tendered reconstruction.” Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1322 (9th Cir. 1986). “This means that any ‘copy’ deposited as part of an application for a certificate of copyright registration must be virtually identical to the original and must have been produced by directly referring to the original.” Kodadek, 152 F.3d at 1212. A subsequent copy meets the “bona fide copy” requirement, but only if that copy is a copy that was ultimately produced by reference to the original. Id.
Here, Pringle deposited an MP3 sound file with his November 2010 application for registration of “Take a Dive” (Dance Version). (SUF ¶ 86.) This MP3 file was not created in 1999, nor was it directly copied from a file that was created in 1999. Rather, it was created later using the separate sound files for each individual instrument contained on the NRG file. (See SUF ¶¶ 68, 90.) As described by Pringle in his declaration, this process closely resembles a “reconstruction” of the original, rather than the creation of a bona fide copy. (See generally Pringle Decl. ¶¶ 159–73.) Although Pringle likens the process to loading a tape reel onto a reel-to-reel tape recorder machine and pushing play, the instructions Pringle provided to Defendants’ expert reveal a series of choices that one who wishes to hear the song has to make in order to correctly hear the song as it allegedly existed originally. (Id. ¶¶ 162, 168, Ex. 47.) The key difference is not that there are many more steps to playing the NRG file on an Ensoniq ASR–10 keyboard than to loading a tape into a tape recorder. Rather, the distinction is that these instructions contain not only guidance on operating an Ensoniq ASR–10 keyboard, but on how to load the files and what decisions to make at each step of the way to play the song properly. For example, step 6 provides an instruction on how to “lower[ ] or ‘mute[ ]’ all the wavesamples in this instrument, which allows isolation of the ‘guitar twang sequence’ wavesamples by raising the volume of only the wavesamples needed for the ‘guitar twang sequence’ to play.” (Id. Ex. 47 at 2.) If someone were to have only the NRG file and knew how to operate an Ensoniq ASR–10 keyboard, these instructions suggest that he would still not be able to recreate the song without additional guidance from Pringle.
Accordingly, the Court concludes that the MP3 created through this process and deposited with the United States Copyright Office is not a bona fide copy. Thus, Pringle “did not properly receive a copyright registration in [“Take a Dive” (Dance Version) ] and his infringement action [on that basis] is foreclosed.” Kodadek, 152 F.3d at 1212.
ii. Take a Dive (Original Version)
It is undisputed that Pringle has a valid copyright in the original version of “Take a Dive” and has standing to sue for infringement of that copyright. To establish copyright infringement of Take a Dive, Pringle must show that (1) defendants had access to his work and (2) IGF and TAD are substantially similar in protected expression. See Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir. 2003). “Where a high degree of access is shown, [the Ninth Circuit] require[s] a lower standard of proof of substantial similarity.” Swirsky v. Carey, 376 F.3d 841, 844 (9th Cir. 2004). With respect to “Take a Dive,” Plaintiff has failed to provide any evidence of access. Pringle’s declaration and that of his brother provide some facts relating to Defendants’ access to “Take a Dive” (Dance Version), but are completely devoid of any reference to “Take a Dive.” (SAF ¶¶ 129–37.) Jeffrey Pringle stated that Michael Brown played cuts from the Dead Beat Club album, but this statement omits any reference to “Take a Dive.” (SAF ¶ 136.) Furthermore, Jeffrey Pringle’s declaration lacks a showing of personal knowledge as to what music Michael Brown played on the radio. See Fed.R.Evid. 602.
Even if Pringle were to have shown some modicum of access, he fails to provide any evidence of substantial similarity between the protectable elements of “I Gotta Feeling” and “Take a Dive.” The declaration of Pringle’s expert, Alex Norris, goes into great detail about the striking similarity between “Take a Dive” (Dance Version) and “I Gotta Feeling.” However, when he compares “Take a Dive” and “I Gotta Feeling,” he notes only minimal similarity and addresses only non-protectable elements. (Norris Decl. ¶¶ 11, 45, Doc. 192.) While Norris does state that “it appears to be very unlikely, if not impossible, that the similarities of ‘Take a Dive’ [dance and original versions, respectively] and ‘I Gotta Feeling’ (Tracks # 3 and # 4) are incidental or coincidental”(id. ¶ 11), it is unclear whether he concludes that the original version of “Take a Dive,” standing alone, is substantially similar to “I Gotta Feeling.” In fact, it appears from the rest of the declaration that Norris concludes that “Take a Dive” (Dance Version) is a derivative of “Take a Dive,” and “Take a Dive” (Dance Version) and “I Gotta Feeling” are strikingly similar. (See id. ¶¶ 6, 43.) However, it does not follow from these conclusions that the original version of “Take a Dive” and “I Gotta Feeling” are strikingly similar. In fact, Norris explains that “the bass drum pattern of [the dance version] creates a rhythmic feel that is much more similar to [the “I Gotta Feeling” tracks] than [the original version] is, which highlights the similarities of [the dance version] to [the “I Gotta Feeling” tracks].” (Id. ¶ 43.)
Therefore, to the extent that Norris has identified any similarity, “no reasonable juror could find substantial similarity” between “Take a Dive” and “I Gotta Feeling.” See Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076 (9th Cir.2006). Accordingly, the Court concludes that Pringle’s claim for infringement of the original version of “Take a Dive” fails. The Court concludes that Pringle has met the registration prerequisite to a copyright suit only with respect to the original version of “Take a Dive.” However, because he has not provided evidence of access or substantial similarity between “Take a Dive” and “I Gotta Feeling,” his copyright claim fails. Accordingly, the Court GRANTS Moving Defendants’ Motion for Summary Judgment.