Browne v. Donalds

District court partially denies music publishers’ and reggaeton artists’ motions to dismiss plaintiffs’ copyright infringement claims targeting more than 1,000 songs featuring plaintiffs’ allegedly original reggaeton drum pattern, finding it premature to decide whether plaintiffs’ musical elements are protectable. 

Music composer and producer Cleveland “Clevie” Browne and the estate of the late music composer and producer Wycliffe “Steely” Johnson own registered copyrights in the musical composition and sound recording of their 1989 song “Fish Market,” which was remade into several alternate versions, including “Dem Bow” and “Pounder Dub Mix II,” by reggae and reggaeton artists. Plaintiffs alleged that more than 100 music publishers and artists, including Drake, Bad Bunny and J Balvin, infringed the drum pattern of “Fish Market,” which plaintiffs describe as “a programmed kick, snare, and hi-hat playing a one bar pattern; percussion instruments, including a tambourine playing through the entire bar, a synthesized ‘tom’ playing on beats one and three, and timbales that play a roll at the end of every second bar and free improvisation over the pattern for the duration of the song; and a synthesized Bb (b-flat) bass note on beats one and three of each bar, which follows the aforementioned synthesized ‘tom’ pattern.” Plaintiffs brought multiple copyright infringement lawsuits, which were consolidated into one action. The court denied defendants’ motions to dismiss plaintiffs’ direct infringement claims, but dismissed without prejudice plaintiffs’ contributory and vicarious infringement claims.

The court first addressed a motion by certain artist defendants to dismiss for lack of personal jurisdiction. The court ruled that, while causing allegedly infringing works to be distributed through online platforms accessible in California did not give rise to personal jurisdiction, the artists’ in-person performances of the allegedly infringing works in California did subject them to jurisdiction in the state. 

As to the first element of direct copyright infringement—ownership of a valid copyright—the court found that, at the motion to dismiss stage, plaintiffs need not include in their complaint copyright registration numbers or copyright registration certificates in order to plausibly allege that the works had, in fact, been registered. Defendants also separately argued that plaintiffs could not sue for infringement of the “Dem Bow” and “Pounder Dub Mix II” derivative works, but the court disagreed, recognizing that plaintiffs’ copyright ownership in “Fish Market” entitles them to sue for copying of derivative works such as “Dem Bow” and “Pounder Dub Mix II” to the extent those works capture original elements from “Fish Market.”

The court acknowledged that plaintiffs only registered the “Pounder Dub Mix II” after filing suit—violating the general rule that copyright registration is a prerequisite to asserting a copyright infringement claim—and that plaintiffs wrongly sought to amend their complaint to add a new claim based on a post-complaint registration. The court declined to dismiss the copyright infringement claim as to “Pounder Dub Mix II,” however, due to the “unique procedural posture of this case” and the fact that the court had already “invested a substantial amount of time and resources managing this action.”

Defendants also argued that plaintiffs’ copyright registration for “Dem Bow” is limited to the lyrics, but plaintiffs stated that they had submitted an amended registration that included the musical elements in “Dem Bow.” The court declined to decide the matter at the motion to dismiss stage. Accordingly, the court found that plaintiffs had sufficiently alleged that they owned valid copyrights in the “Fish Market” composition and sound recording, the “Dem Bow” composition, and the “Pounder Dub Mix II” sound recording.

The court moved on to analyze the second prong of the direct copyright infringement claims—whether plaintiffs have sufficiently alleged copying of protectable elements of plaintiffs’ works. The court rejected defendants’ initial argument that they did not have access to “Fish Market,” finding that there was a reasonable probability that defendants had the opportunity to hear “Fish Market” given the song’s “success and popularity … in the reggae dancehall scene.”

The court also found that plaintiffs provided specific allegations of infringement “sufficient to notify [d]efendants as to the type of infringing conduct and the source of the claims.” Specifically, plaintiffs identified their copyrighted works and attached a chart to their complaint outlining defendants’ allegedly infringing works as well as the basis of infringement. 

One of defendants’ key arguments was that there is no substantial similarity between the competing works because the alleged similarities involved unprotectable musical elements. The court determined, however, that it was premature at the motion to dismiss stage to decide whether plaintiffs’ musical elements—or the combination of those elements—are protectable or original. The court pointed out that the cases cited by defendants were decided at the summary judgment or later stages “where the court had the benefit of the parties’ evidence and expert testimony.”

Defendants also posited that the rhythm and drum beats of plaintiff’s song constitute scènes à faire and are therefore unprotectable, but the court was not prepared at this stage to “examine the history of the reggaeton and dancehall genres and dissect the genres’ features,” which would be required in order to decide whether those elements are commonplace. 

The court did grant defendants’ motion to dismiss plaintiffs’ contributory and vicarious infringement claims because plaintiffs failed to allege how defendants had “the right and ability to supervise the underlying infringing conduct” or induce or cause the infringing acts.

Summary prepared by Tal Dickstein and Alex Loh