Marino v. Usher

Third Circuit affirms dismissal of songwriter’s copyright infringement suit alleging pop star Usher and others failed to pay him sufficient royalties for co-writing “Bad Girl,” holding that Usher was joint owner of copyright and could not be sued for infringement, and upholds sanctions against plaintiff’s lawyer.

Songwriter Daniel Marino sued pop star Usher, Sony Music Entertainment and others for copyright infringement in 2011, alleging that he had been cheated out of royalties for a song he co-wrote called “Club Girl,” which later became “Bad Girl” on Usher’s 2004 “Confessions” album. The district court granted summary judgment in favor of defendants, finding that, because Marino had jointly created the song with two co-authors, including Usher, Marino’s infringement claims must because co-authors of a joint work are each entitled to undivided ownership and cannot sue another co-owner for infringement. The district court explained that, without direct infringement, there can be no vicarious infringement, hence the derivative song “Bad Girl” did not infringe Marino’s rights. The district court also imposed more than $28,000 in sanctions against Marino’s attorney, Francis Malofiy, for contacting an unrepresented defendant in violation of Pennsylvania’s Rules of Professional Conduct.

On appeal, Marino argued that the district court improperly determined that “Club Girl” was jointly owned because he and his two co-authors had a preexisting oral agreement allotting credit and revenue for the song. The Third Circuit nevertheless concluded that the district court had correctly found that “Club Girl” is a jointly owned work, and that Marino’s argument was too late and thus deemed waived, as he did not raise it until the vast majority of defendants had been granted summary judgment. The court also found that Marino’s testimony and actions indicated that he had granted an implied license to defendants for the use of “Club Girl.”

The Third Circuit also upheld the dismissal of Marino’s state law claims for a constructive trust and an accounting, because they arose from the same set of facts as Marino’s copyright infringement claims, and were thus pre-empted by the Copyright Act.

The Third Circuit affirmed the imposition of a $110,000 attorneys’ fee award against Marino, which represented a 90 percent reduction from the original amount of the award, given Marino’s lack of financial resources.

Finally, the Third Circuit upheld a $28,000 sanction against Marino’s lawyer, Francis Malofiy, for contacting an unrepresented defendant, misrepresenting to the defendant that he and Marino’s interests were not adverse, and persuading the defendant to sign an affidavit against his interests. The district court suspended Malofiy from practicing law for three months because of these actions. As the Third Circuit panel noted in affirming Malofiy’s three-month suspension, Malofiy knew or reasonably should have known that the unrepresented defendant misunderstood Malofiy’s role in the matter, and Malofiy failed to correct the misunderstanding.

Notably, Malofiy also unsuccessfully represented plaintiffs in copyright infringement litigation against members of Led Zeppelin over the song “Stairway to Heaven” and against Twenty-First Century Fox over the sitcom “New Girl,” the latter of which resulted in a $760,000 attorneys’ fee award against Malofiy’s clients.

Summary prepared by Tal Dickstein and Amanda-Jane Thomas.