Levitin v. Sony Music Entertainment

In copyright infringement action arising out of international release of song “Timber” by performing artists Pitbull and Kesha, district court dismisses claims against Sony Music Entertainment, which obtained license from co-owner of allegedly infringed work, but denies motion to dismiss claims that Sony’s foreign affiliates infringed plaintiffs’ work under foreign law.

Plaintiffs, the co-authors of “San Francisco Bay,” a 1978 song performed by Lee Oskar Levitin featuring a distinctive harmonica riff, sued Sony Music Entertainment and other domestic entities, as well as Sony’s foreign affiliates, for domestic and foreign copyright infringement following the international release of the song “Timber” by rapper Pitbull and pop star Kesha. Plaintiffs alleged that the song contains the same harmonica solo and melody as “San Francisco Bay” and that the “Timber” harmonica player was, in fact, specifically instructed to emulate Levitin’s harmonica riff. Plaintiffs also alleged that the domestic defendants made the song “available” to the foreign defendants, which, in turn, released “Timber” in the United Kingdom, Italy, Germany, Mexico, Spain, Canada, Australia, France and South Korea. All defendants moved to dismiss the complaint for failure to state a claim, and the foreign defendants also moved to dismiss for lack of personal jurisdiction and on the basis of forum non conveniens. The court granted dismissal of only the claims against the U.S. defendants.

The domestic defendants argued that plaintiffs failed to state a claim because defendants had a license to use the harmonica riff from one of plaintiffs’ co-owners and because plaintiffs did not allege any actionable “predicate acts” of copyright infringement occurring in the U.S. that would enable them to sue the domestic defendants for violations of foreign copyright laws. The district court agreed, noting, first, that the Copyright Act does not apply extraterritorially. U.S. courts do not have subject matter jurisdiction over infringement outside the U.S., unless the defendant commits an act of infringement within the U.S. that “permits further reproduction outside of the U.S.” – a so-called predicate act. None of the alleged actions of the domestic defendants violated U.S. copyright law because their license from one of the co-owners insulated them from liability under U.S. copyright law. The court specifically rejected plaintiffs’ attempts to rely on “outdated and overruled case law holding that the ‘authorization’ of copyright infringement abroad constitutes a predicate act in violation of the Copyright Act,” concluding instead that there can be no liability under foreign copyright law where, as here, the conduct does not itself constitute a violation of U.S. copyright law.

The foreign defendants also moved to dismiss, arguing that the copyright laws of the foreign countries, which require that all co-owners of a copyright agree to license a copyrighted work (in contrast with U.S. law, under which a single co-owner may unilaterally license a work), did not apply. The court rejected this argument, holding that, under the Second Circuit’s decision in Itar-Tass v. Russian Kurier News Agency, 153 F.3d 82 (2d Cir. 1998), while issues of copyright ownership are determined under U.S. copyright law, issues of infringement are decided under the law where the alleged infringement occurred.

The foreign defendants also argued that the plaintiffs’ various agreements, viewed together, gave defendants’ licensor the authority to issue licenses on behalf of plaintiff co-owners as well. The district court rejected both arguments. The court rejected this argument, finding that a reading of the contracts did not support this conclusion as a matter of law, as the language of the agreements was susceptible to differing interpretations and presented an issue of fact that could not be resolved on a motion to dismiss.

The court also denied the foreign defendants’ motions to dismiss for lack of personal jurisdiction and on the grounds of forum non conveniens. According to the court, plaintiffs had made the requisite showing of specific jurisdiction under the New York long-arm statute (because the foreign defendants transacted business in New York) and constitutional due process requirements had been met. The court explained that plaintiffs’ choice of forum should be afforded deference unless the balance of both public and private interests strongly justified transfer. Although the public interests weighed slightly toward the foreign defendants, the private interests weighed heavily in plaintiffs’ favor.