68 U.S.P.Q.2d 1812 (C.D.Cal. 2003)
Edward “Kid” Ory
Country Joe McDonald
“I Feel Like I’m Fixin’ to Die Rag”
Comment by Charles Cronin
This is a sadly misbegotten case, involving a plaintiff who claimed in 2003, infringement of a work written around 1920, by a song that the defendant wrote and recorded around 1965. The court’s opinion trudges through the dreary elements of summary judgment and laches, winding up by awarding the defendant not only summary judgment but attorneys’ fees as well.
The summary judgment was based upon the plaintiff’s extraordinarily lengthy “slumbering on her claim,” and the judicial opinion does not touch upon the more interesting question of musical similarity between the disputed works. It is obvious from hearing recordings of the two numbers that the defendant was influenced by “Muskrat Ramble,” and the opening “one, two, three…” of “Fixin’ to Die” is lifted directly from the little sequence of ”Muskrat” heard beginning about twenty seconds into the audio clip linked above.
In Judge Manella’s opinion the plaintiff was more interested in “erasing the defendant’s song from the planet” than with protecting her copyright. My sympathies are with the plaintiff on that front; the words of “Fixin’ to Die” may have a politically altruistic base (opposition to the Vietnam War) but the music is execrable, as is Joe McDonald’s now painfully dated performance of it. This is particularly evident when his recording is heard alongside the pitch-perfect, and still fresh, performance of “Muskrat Ramble” by Louis Armstrong and his “Hot Five” band.
Opinion by Judge Nora Manella
On September 20, 2001, Babette Ory (“Plaintiff”) initiated this action against “Country Joe McDonald,” aka Joe McDonald, and Alkatraz Corner Music Co. for copyright infringement.1 On January 2, 2002, Plaintiff filed a First Amended Complaint against Defendant alleging copyright infringement. Plaintiff alleges that a song written by McDonald in 1965, “I Feel Like I’m Fixin’ to Die Rag,” infringes “Muskrat Ramble,” an instrumental written by her father, Edward “Kid” Ory in the early 1920s and copyrighted in 1926. Currently pending before the court is Defendant’s motion for summary judgment.
II. FACTUAL BACKGROUND2
Kid Ory wrote a Dixieland jazz melody titled “Muskrat Ramble” in 1921.3 Defendant’s Statement of Uncontroverted Facts (“UF”) ¶ 1; Plaintiff’s Response to Statement of Uncontroverted Facts (“UF Resp.”)¶ 1; Steven Lasker Declaration (“Lasker Decl .”), Ex. 2. Kid Ory and Louis Armstrong (“Armstrong”) collaborated in fathering Dixieland music.4 UF ¶ 4. “Muskrat Ramble” is an instrumental. UF ¶ 5. Kid Ory registered the melody of “Muskrat Ramble” with the Copyright Office in 1926. UF ¶ 9; Evidence Submitted in Support of Defendant’s Motion for Summary Judgment (“Def.Evidence”), Ex. 54 (copyright record), Ex. 39 (First Amended Complaint (“FAC”)) ¶ 5.5 Kid Ory died in 1973. UF ¶¶ 6, 93. In October 2001, three-quarters of a century after the composition was copyrighted, Plaintiff obtained ownership of the United States copyright for “Muskrat Ramble” after filing the Complaint in this action. UF ¶ 8.6 Plaintiff’s predecessor in interest was George Simon Music Company. Mot. 3; Def. Evidence, Ex. 56 (George Simon Inc. Renewal Application), Ex. 35 (Termination Notice recorded at Copyright Office). Plaintiff has identified a reproduction of the “Muskrat Ramble” lead sheet by Kid Ory as the deposit copy in the Copyright Office. UF ¶ 35; Def. Evidence, Ex. 33.
Defendant created “I Feel Like I’m Fixin’ to Die Rag” (“Fixin”) in 1965, protesting the Vietnam War. UF ¶ 11; First Amended Complaint (“FAC”) ¶ 7. “Fixin” was first published September 15, 1965. UF ¶ 12. Copyright registration 243,188 issued in 1968 for lyrics and music. Id. McDonald performed “Fixin” at the first Woodstock music festival in 1969. UF ¶ 13. Plaintiff alleges that “Fixin” incorporates a “portion of the musical elements” of “Muskrat Ramble,” specifically a hook or riff. UF ¶ 14; FAC ¶ 7.7
Plaintiff first heard of Joe McDonald when she heard him play “Fixin” on the radio in 1968. UF ¶ 103.8 After hearing “Fixin” on the radio, Plaintiff went to a record store and bought the Country Joe & The Fish album with its recording of “Fixin.” UF ¶ 104. Plaintiff brought the record home and played “Fixin” for her father. Her mother called George Simon at his company that day. UF ¶ 105.9 George Simon Music Company decided not to pursue the matter. Plaintiff remembers that Kid Ory was told that he would be welcome to pursue it on his own. UF ¶ 106. George Simon Music Company was aware of McDonald and “Fixin” for three decades and did nothing. UF ¶ 107. Plaintiff watched the film “Woodstock” when it was first released in 1970 or 1971, and saw McDonald singing “Fixin” in the film. UF ¶¶ 114, 115. Plaintiff knew that McDonald was in the film when it was shown on cable in 1989. UF ¶ 117. By Plaintiff’s own account, “Fixin” has become McDonald’s “signature song,” and is an “American classic.” FAC ¶ 7.
Plaintiff’s work history includes employment with A & R, United Artists record company, EMI-United Artists record company, and Island record company. UF ¶ 94. She worked at Island from early 1976 through the end of 1977 in an all purpose floating position. UF ¶ 95. Plaintiff was employed by EMI from fall 1979 through the end of 1980, and then with EMI-United Artists from 1980 to spring 1982. UF ¶ 96. Her position with these entities was assistant to the head of A & R Artists Relations. UF ¶ 97. Plaintiff’s most recent promotional work for record companies was in December 2002. UF ¶ 99.
Plaintiff remembers that her father said the “Fixin” lyrics were rude, unpatriotic, and obscene. UF ¶ 110. She recalls that he also said he “wished he could have gotten the guy and gotten his copyright and gotten [“Fixin”] erased from the planet.” Ory Dep. at 117:18-22. In 1971, Kid Ory told Plaintiff he was leaving her his royalties and asked her to protect his archives and his songs from infringers. Ory Decl. ¶ 16. Following Kid Ory’s death in 1973, no attempt was made to terminate the assignment to George Simon Music of “Muskrat Ramble.” Def. Evidence, Ory Dep. at 73:3-5. Nor was termination attempted in the five-year period after Kid Ory died. UF ¶ 122. Plaintiff’s mother had legal representation handling the arrangements for Ory’s estate. UF ¶ 123. In 1978, as part of the probate of Plaintiff’s mother’s estate, Plaintiff’s lawyers sought-and failed-to have “Muskrat Ramble” copyrighted in Plaintiff’s name by terminating the copyright registration of George Simon Music.10 UF ¶ 121. Plaintiff did not have her attorneys challenge the Copyright Office rejection of her 1978 attempt to register Muskrat Ramble. UF ¶ 125.11
For 36 years, McDonald performed and licensed “Fixin” and sold musical sound recordings containing “Fixin” without copyright complaint or challenge by any third party. UF ¶ 131. McDonald was first contacted regarding a claim of copyright infringement with “Muskrat Ramble” in July 2001, when Bill Belmont, the administrator of “Fixin” since 1978, was contacted by Plaintiff’s current counsel. UF ¶ 131. Until July 2001, neither Plaintiff nor her predecessors-in-interest had notified McDonald that they believed McDonald’s “Fixin’ to Die Rag” infringed “Muskrat Ramble .” UF ¶ 133. Plaintiff’s father, Kid Ory, her mother, and her immediate predecessor-in-interest, George Simon Music Company, all knew of McDonald and “Fixin” as early as 1968, but none made any demand or complaint to McDonald. UF § 134.
III. LEGAL STANDARD
Summary judgment is appropriate when “the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). Summary judgment is “properly regarded not as a disfavored procedural shortcut, but rather as an integral part of the Federal Rules as a whole, which are designed ‘to secure the just, speedy and inexpensive determination of every action.’ ” Celotex Corporation v. Catrett, 477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (quoting Fed.R.Civ.P. 1).
In a trio of 1986 cases, the Supreme Court clarified the applicable standards for summary judgment. See Celotex, supra; Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Matsushita Electrical Industry Co. v. Zenith Radio Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. See Anderson, 477 U.S. at 256. The governing substantive law dictates whether a fact is material; if the fact may affect the outcome, it is material. See id. at 248. If the moving party seeks summary adjudication with respect to a claim or defense upon which it bears the burden of proof at trial, it must satisfy its burden with affirmative, admissible evidence. By contrast, when the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out the absence of evidence submitted by the non-moving party. The moving party need not disprove the other party’s case. See Celotex, 477 U.S. at 325.
If the moving party meets its initial burden, the “adverse party may not rest upon the mere allegations or denials of the adverse party’s pleadings, but the adverse party’s response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e). When assessing whether the non-moving party has raised a genuine issue, the court must believe the evidence and draw all justifiable inferences in the non-movant’s favor. Anderson, 477 U.S. at 255 (citing Adickes v. S.H. Kress and Co., 398 U.S. 144, 158-59, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970)). Nonetheless, “the mere existence of a scintilla of evidence” is insufficient to create a genuine issue of material fact. Id at 252. As the Supreme Court explained in Matsushita,
[w]hen the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts…. Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no “genuine issue for trial.”
Id., 475 U.S. at 586-87 (citations omitted).
To be admissible for purposes of summary judgment, declarations or affidavits must be based on personal knowledge, must set forth “such facts as would be admissible in evidence,” and must show that the declarant or affiant is competent to testify concerning the facts at issue. Fed.R.Civ.P. 56(e). Declarations on information and belief are insufficient to establish a factual dispute for purposes of summary judgment. Taylor v. List, 880 F.2d 1040, 1045 (9th Cir.1989).
“And it’s one, two, three, what are we fighting for?”12 These words, penned by Country Joe McDonald some 38 years ago to protest the Vietnam War, could well apply to the action before the court today. It is undisputed that more than three decades elapsed from the time Plaintiff and her father first became aware of “Fixin” and Defendant received his first notice of alleged infringement. If ever there were a case that should be barred by the doctrine of laches, this would appear to be it.
The doctrine of laches is an equitable defense that prevents suit by a plaintiff who, with full knowledge of the facts, sleeps upon his rights. See Danjaq LLC v.Sony Corp., 263 F.3d 942, 950-51 (9th Cir.2001) (affirmed barring by laches of copyright infringement counterclaim where a delay of 19 to 36 years between release of allegedly infringing movies and filing of infringement counterclaim). As Judge Learned Hand explained in Haas v. Leo Feist, Inc., 234 F. 105 (S.D.N.Y.1916):
It must be obvious to every one familiar with equitable principles that it is inequitable for the owner of a copyright, with full notice of an intended infringement, to stand inactive while the proposed infringer spends large sums of money in its exploitation, and to intervene only when his speculation has proved a success. Delay under such circumstances allows the owner to speculate without risk with the other’s money; he cannot possibly lose, and he may win.
Id. at 108. “To demonstrate laches, the ‘defendant must prove both an unreasonable delay by the plaintiff and prejudice to itself.’ ” Danjaq, 263 F.3d at 951 (quoting Couveau v. Am. Airlines, Inc. 218 F.3d 1078, 1083 (9th Cir.2000)). The three elements of laches are (1) delay, (2) unreasonableness of delay, and (3) prejudice. Id. at 952-55; see also 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.06[B] (2002).
Delay in filing suit is the first element of a laches defense. Danjaq, 263 F.3d at 952. “[D]elay is to be measured from the time that the plaintiff knew or should have known about the potential claim at issue.” Kling v. Hallmark Cards, Inc., 225 F.3d 1030, 1036 (9th Cir.2000). “[T]he law is well settled that where the question of laches is in issue[,] the plaintiff is chargeable with such knowledge as he might have obtained upon inquiry, provided the facts already known by him were such as to put upon a man of ordinary intelligence the duty of inquiry.” Johnson v. Standard Mining Co., 148 U.S. 360, 370, 13 S.Ct. 585, 37 L.Ed. 480 (1893).
It is undisputed that Plaintiff’s father, Kid Ory, her mother, and her predecessor-in-interest, George Simon Music Company, knew of McDonald and his song “I Feel Like I’m Fixin’ to Die Rag” no later than 1969, but made no demand or complaint to McDonald. UF ¶¶ 103-105, 134; Ory Decl. ¶ 9. It is equally clear that Plaintiff herself knew of “Fixin” no later than 1969 and made no demand on Defendant until July 2001. UF ¶¶ 103, 131. By any measure, this delay is “more than enough” to satisfy the first element of laches. Danjaq, 263 F.3d at 952, citing Jackson v. Axton, 25 F.3d 884, 889 (9th Cir.1994) (delay of 19 years more than sufficient).
Plaintiff does not attempt to argue that a delay of over three decades is insufficient to trigger the defense of laches. Instead, she argues that laches is not a valid defense because Defendant has purportedly infringed within three years of the date of Plaintiff’s filing of her Complaint. Opp. at 11.13 Plaintiff asserts that her claim is not barred by laches because it is only for infringements committed in the past three years, within the statutory limitations period. Opp. at 13. However, the Ninth Circuit has recognized that laches may bar a statutorily timely claim. Danjaq, 263 F.3d at 954 (citing Kling, 225 F.3d at 139; Jackson, 25 F.3d at 888). As the Ninth Circuit observed in Danjaq, “Where, as here, the allegedly infringing aspect of the DVD is identical to the alleged infringements contained in the underlying movie, then the two should be treated identically for purposes of laches.” Id. at 953.
Here, Defendant’s alleged performance and recording of “Fixin” within the three years prior to the filing of the Complaint is not alleged to have infringed Plaintiff’s rights differently than the decades of prior alleged infringements. Indeed, McDonald’s conduct during the three years prior to the filing of the Complaint-performing and licensing “Fixin” and selling musical sound recordings-was entirely consistent with his conduct during the previous 29 years. UF ¶ 231. As the Ninth Circuit noted in Danjaq, allowing a claim for infringement based on recent infringements where the same claim regarding the original work would be barred by laches, would “effectively swallow the rule of laches, and render it a spineless defense.” Id. at 953. “ ‘Without the availability of the application of laches to a claim arising from a continuing wrong, a party could, theoretically delay filing suit indefinitely.’ We decline to reach such a result here.” Id . at 953-54 (citing Hot Wax Inc. v. Turtle Wax. Inc., 191 F.3d at 813, 821-22 (7th Cir.1999)). This court likewise declines to reach such a result.
2. Unreasonableness of Delay
Where there is delay, the next question is whether the delay was reasonable. Danjaq, 263 F.3d at 1887 (citing Couveau, 218 F.3d at 1083). For example, delay may be held excusable if the work was not being exploited by the defendant during the period of the claimant’s inactivity, or if the plaintiff might reasonably have concluded that the infringement was so minor that enforcement of the copyright was not worth the cost of litigation. 3 Nimmer on Copyright § 12:06[B] (2002). The Seventh Circuit in Roulo v. Russ Berrie & Co., 886 F.2d 931 (7th Cir.1989) stated that “[a] two year delay in filing an action following knowledge of the infringement has rarely been held sufficient to constitute laches.” Id. at 942. At the other end of the spectrum, decades of delay will plamly suffice. 3 Nimmer on Copyright § 12:06 [B] (citing Danjaq, 263 F.3d at 654-55) (delay of 19 to 36 years sufficient to satisfy delay element of laches)).
Plaintiff argues that her delay was reasonable because “Muskrat Ramble” was previously owned by George Simon Music Company, and she did not obtain ownership of the rights to the song until 2001.14 Opp. at 11. Plaintiff cites no authority for the proposition that a change in ownership of a copyright may breathe new life into a claim that would otherwise be laid to rest by laches. Indeed, authority is to the contrary: “[a copyright] assignee [cannot] claim rights that would not have been available to his assignor.” 1 Nimmer on Copyright § 5.01[B] (1999): see also Bong v. Alfred S. Campbell Art Co., 214 U.S. 236, 29 S.Ct. 628, 53 L.Ed. 979 (1909) (copyright assignee may not claim a right unavailable to his assignor). To establish the defense of laches to a copyright infringement claim, a defendant must show that the plaintiff (or her predecessors in interest) did not assert her rights diligently. See Lottie Joplin Thomas Trust v. Crown Publishers, Inc., 592 F.2d 651, 655 (2d Cir.1978) (plaintiff not barred by laches from denying that one defendant’s alleged assignor of copyrights had owned the copyrights at issue, in absence of showing that Plaintiff or her predecessors in interest had not asserted her or their rights diligently). As stated in the context of patent law, “a successor-in-interest is charged with the knowledge and dilatory conduct of its predecessors.” Baker Hughes. Inc. v. Davis-Lynch, Inc., 2000 WL 33993301, at *9 (S.D.Tex.2000) (citing Chisum on Patents § 19.05[a][i] (Mathew Bender 1998)).
Plaintiff acknowledges the relevance of the prior copyright owners’ delay when she asserts that the delay was reasonable because when Kid Ory first learned of “Fixin” he was in poor health and incompetent to handle his business affairs. Opp. at 11; Ory Decl. ¶ 9. While that may be, it is undisputed that since 1968, Plaintiff’s predecessor-in-interest to “Muskrat Ramble” acquiesced in McDonald’s use of “Fixin” UF, Conclusions of Law ¶ 20.15 Moreover, there is no evidence that Plaintiff or her mother made any effort to seek assistance in the management of Ory’s business affairs. It is undisputed that not a single letter was sent to McDonald until Plaintiff’s current counsel called Bill Belmont, the administrator of “Fixin,” in July 2001 about the alleged infringement that Plaintiff and her predecessor-in-interest had known about since at least 1969.16
Moreover, Plaintiff’s declaration that during this time she was ignorant of the music business and copyright law is belied by her long-standing involvement in the music recording industry and representation by legal counsel on matters including intellectual property. See Ory Deck ¶ 17. But see UF ¶¶ 16-19, 95-99, 118, 125, 128.17 Since at least the 1970s, Plaintiff has used a number of attorneys regarding Kid Ory’s music and her own musical interests, and has been actively involved in litigation with various counsel. UF ¶¶ 17, 121.18 In short, Plaintiff has provided no viable justification for the three-decade delay in asserting her claim.
The third element of a laches defense is a showing that the plaintiff’s unreasonable delay has prejudiced the defendant. 3 Nimmer on Copyright § 12:06 [B]. There are two primary forms of prejudice-evidentiary and expectations-based. Danjaq, 263 F.3d at 955. “Evidentiary prejudice includes such things as lost, stale, or degraded evidence, or witnesses whose memories have faded or who have died.” Id. (citations omitted). A defendant may show expectations-based prejudice where he took actions or suffered consequences that he would not have if the plaintiff had promptly brought suit. Id. (citing Jackson, 25 F.3d at 889). “[I]f only a short period of time has elapsed since the accrual of the claim, the magnitude of prejudice require[d] before the suit should be barred is great, whereas if the delay is lengthy, prejudice is more likely to have occurred and less proof of prejudice will be required.” Hot Wax, 191 F.3d at 824 (citations omitted).
Defendant asserts that severe evidentiary prejudice exists with respect to a determination of the authorship and originality of “Muskrat Ramble.” Mot. at 4. It is undisputed that “Muskrat Ramble” was registered by Kid Ory in 1926.19 It is thus protected under the 1909 Copyright Act. Section 209 of the 1909 Act created a presumption of validity as to “all facts stated” in the registration certificate. 3 Nimmer on Copyright § 12.11[b] (2002). The presumption of validity likewise creates a presumption of originality under the 1909 Act, that may be rebutted by Defendant. Id.
The authorship and originality of “Muskrat Ramble” is uncertain. Defendant has submitted evidence that “Muskrat Ramble” was written by Louis Armstrong, with whom Ory closely collaborated. Armstrong stated in a 1965 interview with Down Beat magazine that “I wrote Muskrat Ramble. Ory named it, he gets the royalties. I don’t talk about it.” Def. Evidence, Ex. to Belmont Decl.; Orrin Keepnews (“Keepnews”) Decl. ¶ 24.20 On the other hand, Plaintiff points to two occasions where Armstrong publicly stated that “Muskrat Ramble” was written by Ory. UF Resp. ¶ 77; Notice of Lodging Audio and Video Evidence, Exs. 2, 3.21 Whether Kid Ory or Louis Armstrong authored “Muskrat Ramble” would now be difficult to ascertain, as both have been dead for decades. Both were still alive some six years after McDonald created “Fixin.” UF ¶ 82; Def. Evidence, Ex. 59 (Plaintiff’s Expert Witness Disclosures), Report of Lasker at unnumbered page 2. It is thus “quite clear that [Defendant] will be hamstrung by the absence of key witnesses…. That there are a few survivors to tell part of the story does nothing to erase the prejudice caused by the unavailability of most of the key players.” Danjaq, 263 F.3d at 956.22
Plaintiff asserts that McDonald’s argument that Armstrong may have written “Muskrat Ramble” proves the existence of triable issues of fact. Opp. at 10. While the existence of triable issues of fact would prevent summary judgment on the issue of originality, it supports a finding of laches. Indeed, the very dispute over originality makes the lack of critical witnesses and the difficulty in obtaining evidence after decades severely prejudicial to McDonald’s defense.
Kid Ory’s own account of how he created “Muskrat Ramble” also raises questions concerning its originality. Ory stated that he created “Muskrat Ramble” while practicing from a saxophone study book. UF ¶ 42. Ory published a statement that “[i]t was while learning [the saxophone] that I was sitting there one day, running the scales and doing arpeggios and just sort of noodling around, when all of a sudden it seemed to me that I had hold of a melody. I started putting it down on paper and adding here and there to fill in the gaps until I finally had the meter worked out.” UF ¶ 44; Def. Evidence, Kegan Decl ¶ 48, Ex. 36 (record album cover text entitled “How I Wrote Muskrat Ramble”). Plaintiff acknowledges that for as long as she can remember, her father told her this same story. UF ¶ 48. As another published account explained:
Ironically, the most famous tune ever written by a jazz trombonist began as a saxophone exercise! Ory, who did a great deal of studying during his Los Angeles years, was reading some exercises out of a book one day while he was practicing the saxophone. He changed a note here and there, shifted the meter around a little, and the tune grew out of this almost accidentally.
Def. Evidence, Ex. 59, Plaintiff’s Expert Witness Disclosures, Ex. 3 (Report of Lasker) at unnumbered page 2.
Plaintiff asserts that one can conclude from Ory’s published remarks only that the saxophone book provided inspiration for “at least one section of Muskrat Ramble.” Without professing to be an expert, Plaintiff asserts that from Ory’s comments about shifting the meter around, one can infer that he refers to the “A” section of the song, but “does not tell us if it also inspired the ‘B’ section.” UF Resp. ¶ 45.23 Plaintiff’s personal opinion is of little assistance in resolving the question whether the section of “Muskrat Ramble” claimed to be infringed by “Fixin” was original with Ory or copied from a saxophone study book. On the other hand, a piece of evidence that could have helped resolve this issue-the study book itself-is purportedly no longer available.24 Here too, loss of evidence and the death of Ory result in evidentiary prejudice to Defendant.
In addition to his challenge to Ory’s authorship and the originality of “Muskrat Ramble,” Defendant asserts that Plaintiff’s predecessor-in-interest, George Simon Music Company, and its auditing agent MCPS, acquiesced in McDonald’s use of “Fixin.” Mot. at 6; Reply at 3; Defendant’s Conclusions of Law (“Law”) ¶ 20. As set forth in trademark law, “[i]n situations in which consent is inferred from conduct, courts sometimes state that the trademark owner is estopped by its “acquiescence” from obtaining relief…. [W]hen acquiescence is inferred … from affirmative conduct … fairly implying consent, the actor may have a defense … without regard to the lack of reasonable diligence on the part of the trademark owner necessary to establish laches.” Restatement 3d of Unfair Competition § 29, Comment c. “Principles of estoppel applicable elsewhere in the law are equally applicable in copyright infringement actions.” 4 Nimmer on Copyright § 13.07 (2003). “In order to prevail on the defense, the accused infringer must demonstrate that (1) the plaintiff knew of and manifested acquiescence in the defendant’s infringing conduct, actual or proposed, (2) the plaintiff intended that the defendant rely on its conduct, and (3) the defendant reasonably relied to its detriment on the plaintiff’s actions.” Cherry River Music Co. v. Simitar Entertainment, Inc., 38 F.Supp.2d 310, 318 (S.D.N.Y.1999).
Defendant asserts that MCPS, the auditing agent in England for George Simon Music Company, studied “Fixin” and determined that it was sufficiently original that George Simon and MCPS declined to seek any royalties when “Fixin” was published in England in 1970. Mot. at 23; UF ¶ 215; Chris Strachwitz (“Strachwitz”) Dep. at 11:3-19, 59:17-22.25 Defendant argues that MCPS’s significant duties with “Muskrat Ramble’s” copyright impute the agent’s knowledge and consent to its principal. Mot. at 23 (citing Guardian Life Ins. Co. of America v. American Guardian Life Assurance Co., 943 F.Supp. 509, 520 (E.D.Pa.1996), abrogated on other grounds by A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198 (3rd Cir.2000) (agent must have some duties with respect to trademark matters to impute agent’s knowledge to principal)). Defendant contends that McDonald’s agent Strachwitz reasonably understood MCPS’s declination to seek royalties as consent, thus barring Plaintiff’s claim on the ground of acquiescence. Mot. at 23, 24.
Strachwitz recalls an initial contact from MCPS raising the possibility that “Fixin” was in conflict with some other copyrighted item, followed by a letter from MCPS saying it had decided that “Fixin” was indeed original. Strachwitz Dep. at 11:3-19. However, Strachwitz does not recall whether MCPS named the other song, nor does he have any documents related to this interchange. Strachwitz Dep. 12:5-13, 25:8-13.26 Bill Belmont called MCPS in 2002 and was informed that MCPS had looked for records but could not locate adequate paper records for that period. UF ¶ 225. In November 2002, Strachwitz wrote to MCPS at Bill Belmont’s behest to attempt to locate copies of the two letters. Strachwitz Dep. 25:19-26:6, Ex. 9. The effort was unsuccessful.
Plaintiff contends that there never was any correspondence. UF Resp. ¶¶ 217-220. Given the length of time that has passed and the lack of substantiating documents, it is impossible to know with certainty what did-or did not-transpire in the purported MCPS investigation. To the extent Defendant would have been able to show that George Simon Music Company, through its agent, actually determined there was no conflict between “Fixin” and “Muskrat Ramble,” he is severely prejudiced by Plaintiff’s delay in bringing this action.
Defendant also asserts that Plaintiff’s delay caused expectations-based, specifically, economic prejudice. “Fixin” is primarily known for its lyrics, which have shock value and political value. UF ¶ 196. “Fixin” is an anti-war protest song and is played primarily in a political-social context. UF ¶¶ 199, 203. The lyrics are more important than the music. UF ¶ 204. Permission to use “Fixin” lyrics is requested many times a year. The lyrics have been quoted in numerous novels and history books. UF ¶ 205. McDonald does not separately license the musical portion of “Fixin.” Belmont Decl. ¶ 20; FAC ¶ 9. Defendant asserts that had there been a valid copyright claim against “Fixin” and had he been notified soon after Plaintiff and her predecessors learned of his song, he could have devised alternate music as background to his lyrics. Mot. at 6. Instead, he continued to record and perform “Fixin” for more than three decades, while Plaintiff and her predecessors did nothing. Consequently, Plaintiff’s delay has prejudiced Defendant economically, as well as evidentiarily. As Plaintiff admits, “Fixin’ To Die Rag” has become a world famous “American Classic,” widely regarded as Joe McDonald’s “signature song.” FAC ¶ 7; UF ¶ 173. The time to bring an infringement suit against Defendant has long since past.
Where delay is lengthy, prejudice is more likely to have occurred and less evidence of prejudice is required. See Hot Wax, 191 F.3d at 824. Delay here is lengthy-at least 32 years. While less proof of prejudice is required, Defendant has nonetheless demonstrated ample evidentiary and expectations-based prejudice. In short, Defendant has established all three elements of the laches defense.
4. Exception for Willful Infringement
Plaintiff alleges that Defendant willfully infringed and therefore the defense of laches is not available to him. Opp. at 13. Guided by the maxim that “he who comes into equity must come with clean hands,” courts have developed the principle that laches does not bar a suit against a deliberate infringer. Danjaq, 263 F.3d at 956. The “piracy” or “willfulness” exception to the laches defense is applied in this circuit. Id. at 957. In Danjaq, the Ninth Circuit defined “willful” as conduct that occurs “with knowledge that the defendant’s conduct constitutes copyright infringement.” Id. (citations omitted). See also 3 Nimmer on Copyright § 12:06[B] (“[A] party accused of infringement, who reasonably and in good faith believes the contrary, is not willful.”).
In Danjaq, the Ninth Circuit found no willful infringement as a matter of law, where there was no evidence of deliberate infringement and no notice of a copyright claim. Danjaq, 263 F.3d at 958. It is undisputed that McDonald received no notice of any alleged infringement from the time he wrote “Fixin” in 1965 until July 2001. UF ¶ 133. For more than three decades, McDonald performed, licensed, and sold sound recordings containing “Fixin” without a copyright complaint from any third party. Then, in 2001, Plaintiff heard an interview of McDonald on the radio and decided to file suit. UF ¶ 126. Following is the relevant section of the interview:
And I remember distinctively finishing the song [Who Am I] and sitting back in my chair and going, ugh, gug, I’m glad that song is over with that was so hard to do and going just, just [strum] on my guitar. It was kinda a Dixieland riff from Muskrat Ramble that I used to play when I had a Dixieland band when I was a teenager and all of a sudden I just reached over and grabbed my pen and I wrote one, two, three, what are we fighting for, don’t ask me and in twenty minutes I had written Fixin To Die Rag[.]
Def. Evidentiary Objections, McDonald Dep., Ex. 29 (transcript of interview prepared by Defendant’s attorney); PL Notice of Lodging Audio and Video Exhibits, Ex. 1 (copy of radio interview on cassette tape).
Plaintiff asserts that in this interview McDonald “admitted infringing the [sic] Muskrat Ramble.” Ory Decl. ¶ 10. The court disagrees. At most, McDonald appears to credit “Muskrat Ramble” as inspiration for “Fixin.” Plaintiff also asserts that McDonald admits on his own sound recording from a concert in 1999 that “Fixin” was based on “an old Dixieland melody.” Plaintiff asserts that the melody must “of course” be “Muskrat Ramble.” Opp. at 4. Plaintiff’s assumption, however, is not evidence of willful infringement. Plaintiff also points to a response written by McDonald to the musical analysis of Plaintiff’s expert Joel Leach, that had been passed on to him by Bill Belmont. Opp. at 14. In this response, McDonald stated, inter alia:
My contention is that there is a similarity in the way my melody line progresses and his composition accents certain chords, in that spot but that is all. And my use is quite distinctly different than Mr. Ory’s use. As for the rest of the song as I mentioned before the two songs do not fit together.
Whether Ms. Ory owns that riff or not I cannot say. But I do know that certain riffs have been around for perhaps hundreds of years and it takes more than a 2 measure riff that is strikingly similar with regard to melody and melodic rhythm to make plagiarism.
Opp., Johnson Deck, Ex. 1.
An acknowledgment of some similarity between the two songs at issue-in the course of litigation-is a far cry from establishing that McDonald willfully infringed “Muskrat Ramble” some 36 years earlier when he wrote “Fixin.” Indeed, the bulk of McDonald’s response addressed the dissimilarity of the two songs. McDonald also clearly stated “[i]t is not my intention at all to rip off KID ORY in any way.” Id.
In Danjaq, the plaintiff, McClory, claimed that certain elements first developed in his materials made their way into the script of the film “Dr. No,” commissioned by the alleged infringer, Danjaq. The Ninth Circuit found that “even assuming this allegation to be true, McClory could show at most infringement, not willful infringement.” Danjaq, 263 F.3d at 958 (emphasis in original). The Ninth Circuit reached this finding notwithstanding evidence of a history of litigation between the parties and a flurry of public accusations by McClory, including full page ads in “Variety” magazine. Id. at 949, 958. Here, by contrast, there was only the sound of silence. As in Danjaq, there is no evidence that McDonald wrote “Fixin” with the knowledge or intention of infringing any existing copyright. “Indeed, [defendant] was not on notice before the current litigation that [plaintiff] claimed a right in the [composition]…. Given that lack of notice and the absence of evidence of willfulness, a jury could not find willful infringement.” Id. As the evidence fails, as a matter of law, to demonstrate deliberate infringement, Plaintiff’s suit is barred by laches.
5. Scope of Order
Defendant seeks an order granting summary judgment, costs, and reasonable attorneys’ fees. While laches typically does not bar prospective injunctive relief, this principle “does not apply where, as here, the feared future infringements are subject to the same prejudice that bars retrospective relief. Danjaq, 263 F.3d at 959. Where “the feared future infringements are identical to the alleged past infringements[,]” any prospective claims will suffer from the very same evidentiary defects that bar the older claims. Laches properly bars a prospective injunction against future infringement “when we know in advance that the defendant will be substantially prejudiced in its ability to defend future claimed infringements in just the same way that it was prejudiced with regard to prior alleged infringements.” Id. Accordingly, Defendant’s laches defense bars Plaintiff from obtaining either damages or injunctive relief.
6. Attorneys’ Fees
Defendant requests an award of reasonable attorneys fees and costs. Mot. at 25. Section 505 of the Copyright Act provides:
In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.
17 U.S.C. 505.
In Fogerty v. Fantasy, 501 U.S. 517 (1994), the Supreme Court rejected the Ninth Circuit’s “dual” standard for awarding attorneys’ fees to plaintiffs and defendants under section 505, and held that prevailing plaintiffs and prevailing defendants must be treated alike in awarding attorneys’ fees under the Copyright Act. Id. at 534. In determining attorneys’ fees, the Supreme Court directed that courts are to exercise equitable discretion “in light of the considerations we have identified.” Id. (citing Hensley v. Eckerhart, 461 U.S. 424, 436-37, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983). “Such considerations include, but might not be limited to, the degree of success obtained, … frivolousness; motivation; objective unreasonableness (both in the factual and legal arguments in the case); and the need in particular circumstances to advance considerations of compensation and deterrence.” Jackson, 25 F.3d at 890 (citing Hensley, 461 U.S. at 436; Fogerty, 501 U .S. at 535 n. 19). “Courts should keep in mind the purposes of the Copyright Act (to promote creativity for the public good) and apply the factors in an evenhanded manner to prevailing plaintiffs and prevailing defendants alike.” Id. (citations omitted).
Defendant has fully prevailed on the basis of his laches defense. In considering the factors outlined by Fogerty, the court finds that Plaintiff’s decades-long delay in bringing suit weighs heavily toward the granting of attorneys’ fees to Defendant. The court has found Plaintiff’s claim of infringement at this late date to be unreasonable. Indeed, the instant litigation appears to have been motivated more by a desire to “erase” Defendant’s song from the planet, than concern with protecting Plaintiff’s recently acquired copyright in “Muskrat Ramble.” Additionally, the Copyright Act’s purpose of promoting creativity for the public good would be ill served by enjoining Defendant from performing or profiting from a song that Plaintiff concedes has become an “American classic” over the nearly four decades Defendant has been performing it. Accordingly, Defendant’s request for attorneys’ fees is granted.
In short, Plaintiff knew of Defendant’s composition for at least 30 years. Over three decades, neither she nor anyone else acted to assert copyright infringement. The delay was both lengthy and unreasonable. Defendant’s ability to mount colorable defenses of lack of originality and acquiescence has been indisputably compromised by the passage of time, the corresponding death of knowledgeable parties, and the uncertain disposition of contemporaneous documents. Plaintiff has failed to counter the overwhelming evidence of inexcusable delay and genuine prejudice with a showing of knowing and intentional infringement. Because Defendant has satisfied the elements of laches, and the record cannot support a finding of willful infringement, Defendant is entitled to judgment as a matter of law.
Accordingly, the court GRANTS Defendant’s motion for summary judgment. The court awards reasonable attorneys’ fees to Defendant, pursuant to the Copyright Act, 17 U.S.C. § 505. Defendant may submit a fee petition within fourteen (14) days of this order. As the prevailing party, Defendant may also file a bill of costs with the Clerk, pursuant to Local Rule 54-3.
1 Joe McDonald does business as Alkatraz Corner Music which was established in 1972 for administrative publishing. Defendant’s Statement of Uncontroverted Facts UF ¶ 184, 185. Hereinafter the court will refer to “Country Joe McDonald,” aka Joe McDonald, dba Alkatraz Corner Music Co. as “McDonald” or “Defendant.”
2 The court considered Defendant’s evidentiary objections and found it unnecessary to rule on them in deciding this motion.
3 In her First Amended Complaint, Plaintiff alleges Kid Ory wrote “Muskrat Ramble” in 1924, a date Defendant notes as an alternate to the 1921 date. However, in her Response to Defendant’s Statement of Uncontroverted Facts and Conclusions of Law, Plaintiff asserts that the correct date is 1921. UF Resp. ¶ 9.
4 One definition of Dixieland music is “[a] style of instrumental jazz associated with New Orleans and characterized by a relatively fast two-beat rhythm and by group and solo improvisations .” Def. Evidence, Ex. 58 (American Heritage Dictionary, 3rd Ed.1996). Plaintiff’s expert Steven Lasker disagrees with this definition, asserting that many Dixieland songs contain lyrics and that can be played in a two-beat or four-beat rhythm. Lasker Decl. ¶ 4.
5 Ray Gilbert created “Muskrat Ramble” lyrics in 1950, and the McGuire Sisters later did another version. UF ¶ 9; Def. Evidence, Ex. 55. The renewal certificate for the 1926 copyright of “Muskrat Ramble” notes that only a melody is claimed, UF ¶ 9; Def. Evidence, Ex. 56.
6 See Def. Evidence, Ex. 35 (Muskrat Ramble Copyright Termination Notices), Ory Dep. at 108:22-110:18, Ex. 57 (Copyright Title Search Report). In her declaration, Plaintiff contradicts her deposition testimony that her registration was effective October 5, 2001 by stating that in February 1, 2001, George Simon Music assigned to her all its rights in the United States copyright of “Muskrat Ramble.” Ory Decl. ¶ 11. Plaintiff provides no evidence to support this assertion. Accordingly, the court will rely upon Plaintiff’s deposition testimony and the evidence provided by Defendant to establish the effective date of her registration.
7 Riff is defined as “[a] short rhythmic phrase, especially one that is repeated in improvisation.” Hook is defined as “[a] catchy motif or refrain.” UF 15; Def. Evidence, Ex. 58 (American Heritage Dictionary, 3rd Ed.1996).
8 Plaintiff objects to this and certain other of the Uncontroverted Facts as irrelevant. The court will not make individual rulings on Plaintiff’s objections, but will include only those facts it deems relevant.
9 It is unclear from Plaintiff’s deposition testimony and her declaration whether she first heard “Fixin,” brought the record home, and played it for her father in 1968 or in 1969. Def. Evidence, Ory Dep. at 44:13-21, 46:18-21; Ory Decl. ¶ 9. Regardless, it is undisputed that at least 32 years elapsed from the time she and her father became aware of “Fixin” and McDonald was first notified of alleged infringement.
10 Plaintiff was the sole beneficiary of her mother’s estate and received legal representation from the Los Angeles firm of Parker Milliken Clark & O’Hara. UF ¶ 18.
11 The rejection was based on the grounds that Mrs. Ray Gilbert, the wife of the song writer who wrote lyrics for “Muskrat Ramble” in 1950, had registered a “Muskrat Ramble” composition with music and lyrics in 1985. UF ¶ 125.
12 Kegan Decl., Ex. 22 (sheet music for “I Feel Like I’m Fixin’ to Die Rag,” words and music by Joe McDonald) at 20.
13 Plaintiff alleges that McDonald has infringed in the last three years both in live performances and at least one sound recording that has been sold on his website. Opp. at 11, Johnson Decl., Ex. 2. Plaintiff also alleges, and Defendant confirms, that he has performed the song since the filing of the lawsuit. Opp. at 11; UF ¶ 233.
14 Whether Plaintiff acquired her rights by assignment from George Simon Music and by termination, as she alleges (Ory Decl. ¶ 11), or by termination only, as asserted by Defendants (UF ¶ 8 and cited evidence), the result is the same. Plaintiff stands in the shoes of her assignor or predecessor-in-interest.
15 Defendant asserts that Kid Ory assigned his Muskrat Ramble copyright to Melrose Music, predecessor of George Simon Music Company, which retained it until Plaintiff’s termination became effective October 5, 2001. Reply at 3. A copyright title search report shows initial transfer to Melrose Brothers Music Company, Inc. in 1937. Def. Evidence, Kegan Decl. ¶ 18, Ex. 59.
16 Plaintiff’s own deposition testimony is that at no time before 2001 did she consider asking George Simon Music to take any action against McDonald. Ory Dep. 91:3-11 (Q. Did you ever consider it? A. It didn’t even cross my mind.).
17 Plaintiff also now asserts that George Simon died in the 1970s (or in the 1980s, according to UF Resp. ¶ 107), and that his son John Simon, when administering the song “had no awareness that McDonald had infringed the song.” Ory Decl. ¶ 12. Any statements regarding the state of mind of George Simon’s son are irrelevant and hearsay.
18 Entertainment lawyer Jerome Cohen of Beverly Hills represented Plaintiff in 1985. UF ¶ 19. In 1989, attorneys represented Plaintiff in granting licenses for videos of Kid Ory in Europe. UF ¶ 118. Plaintiff also hired a New York City firm to defend her in a 1994 lawsuit, Song Writers Guild v. Ory, concerning royalties for the tune “Ipanema.” UF ¶ 17. Since that litigation, Plaintiff has been represented by attorney Steve Lowry and her current attorney, Neville Johnson, who has represented her since 1995. Id.; Ory Decl. ¶ 13.
19 See Def. Evidence, Ex. 54. Defendant describes Exhibit 54 as a copy of the Copyright Office registration of “Muskrat Ramble.” It does not, however, appear to be a certificate of registration issued to Plaintiff, but rather a record of the filing of copyright deposits by various claimants. Nonetheless, Defendant does not dispute that “Muskrat Ramble” was validly registered and that there is a legitimate deposit copy in the Copyright Office. Mot. at 18, n. 2.
20 Belmont also asserts that liner notes for a current compact disc set of the group Louis Armstrong and his Hot Five containing “Muskrat Ramble” suggest that Armstrong originally created the “Muskrat Ramble” music. Belmont Decl. ¶¶ 10, 11. However, the liner notes are not included with Belmont’s declaration.
21 These are recordings of a broadcast that aired in 1961 entitled “The Wonderful World of Disney-Disneyland After Dark,” where Ory and Armstrong performed the song, and Armstrong’s spoken introduction to the song on a 4-LP set recorded in or about January 1957. Opp. at 9.
22 Further calling Ory’s authorship into question, Sidney Bechet, a New Orleans jazz artist, was reported to have claimed that “Muskrat Ramble” was based on an old folk tune, “The Old Cow Died .” Belmont Decl. ¶ 30; Def. Evidence, Ex. 59 (Lasker Report). Bechet died in 1959, and there is no substantiation of this claim in the record. As Ory is no longer alive, he can neither verify nor deny that “Muskrat Ramble” was based on this song.
23 Plaintiff’s expert Joel Leach identifies a 16-bar section of both “Fixin” and “Muskrat Ramble” as the “B” section and asserts that it is in that section that similarities between the two songs occur. Leach Decl. ¶¶ 5, 39.
24 In her deposition testimony, Plaintiff stated that she still had Ory’s saxophone music books. Ory Dep. at 147:16-18. Plaintiff now asserts she does not have these books. UF Resp. at 50.
25 Strachwitz published “Fixin” from 1965 to 1977. UF Resp. ¶ 215.
26 Contrary to the suggestion of Plaintiff’s counsel at oral argument, Strachwitz did not withdraw or contradict this statement. He simply stated that he did not specifically recall that the song at issue was “Muskrat Ramble.” Strachwitz Dep. at 22:3-26:6.