Warner Music Group Inc., Universal Music Group Inc. and a handful of other entities involved with Notorious BIG’s 1994 debut album are off the hook on copyright claims lodged by a 1970s music producer, a New York federal judge ruled Tuesday.
Lee Hutson, who was popularly known as the lead singer of the soul group The Impressions in the 1970s, claimed the producers of Notorious BIG’s Ready to Die album had used a sample from his hit song “Can’t Say Enough About Mom” in Biggie’s song “The What,” according to his April 2014 suit. But U.S. District Judge Richard J. Sullivan ruled Tuesday the songwriter hadn’t proven he owned the music that was used in the sample.

Hutson had claimed he was “doing business as” the company that owned the song, but corporate documents showed otherwise, Judge Sullivan found. And Hutson had reached a settlement with a Warner unit in 2008 relinquishing his rights to the music, the judge said Tuesday.

“The court finds that plaintiff lacks standing to sue because he fails to plausibly allege that he owned a copyright interest in the composition at the time of the alleged infringement — 1994 to the present — or was subsequently transferred copyright ownership that expressly included the right to sue for causes of action that accrued prior to his ownership,” Judge Sullivan wrote in Tuesday’s order.

“Can’t Say Enough” was a hit for Hutson in 1973, according to the decision. But in 2012, the songwriter said he discovered that the rapper, also known as Biggie Smalls, had used a sample of the track in “The What,” according to his suit. The suit named Warner, Universal Music Group, EMI Music Publishing Inc., Big Poppa Music, Bad Boy Records, Janice Combs Publishing Inc., along with Biggie’s estate and a producer of the album as defendants.

In September 2014, Notorious BIG LLC, which handles the rapper’s estate, Combs Publishing, Warner Music, Universal Music Group and other defendants called for the suit’s dismissal, saying principally that Hutson didn’t have standing to sue them because he had handed over his copyright interests in “Can’t Say Enough” in a settlement in 2008.

Judge Sullivan agreed, finding that Hutson had failed to show his ownership interest in the copyright of the composition during the period the producers were supposed to have infringed, according to the decision.

The suit also included claims that the copyright had been infringed overseas, but Judge Sullivan ruled he didn’t have jurisdiction over those claims.

Meanwhile, Osten Harvey Jr., known in the music world as Easy Mo Bee, who produced much of the work on Ready to Die, didn’t file a motion to dismiss the suit, and didn’t join in the others’ motion to dismiss, the judge noted. But Judge Sullivan dismissed the claims against the producer anyway, according to the order.

Judge Sullivan also refused to allow Hutson to amend his suit, finding that the songwriter hadn’t proposed any way to fix the ownership pleading problems in his existing complaint, according to the decision.

“Plaintiff made only a cursory request for leave to amend in his opposition, without including a proposed amended complaint or any explanation of the facts that would cure the first amended complaint’s deficiencies,” the judge wrote.

Hutson’s suit isn’t the first litigation to touch on allegedly illegally used samples on Ready to Die. A Tennessee federal judge temporarily halted sales of the album in 2006 during a suit over whether the producers had used unauthorized samples of music owned by two companies, and a federal jury awarded $4.2 million to the plaintiffs in that litigation, court records show.

Staci Riordan of Nixon Peabody LLP, who represented Biggie’s estate and several other defendants in Hutson’s suit, said she was tremendously pleased with the court’s ruling and the vindication of her client’s rights.

She said her partner, Julian Petty, who has represented the estate for years, noted the importance of keeping records for clients. Riordan cited the recent “Happy Birthday To You” case, a sprawling class action settled earlier this month after a judge ruled Warner/Chappell Music never owned any rights to the iconic song, though it had been charging millions in licensing fees, as proof copyright lawyers should keep an eye out for paper trails on content ownership.

The Hutson case turned on the ownership of the composition and sound recording, she said. Riordan said her team had uncovered evidence that undermined Hutson’s claim of ownership on the music, but that even after the evidence was shared with him, Hutson refused to voluntarily withdraw his suit.

“The estate, as an owner of valuable intellectual property, respects the rights of others, but will not hesitate to vigorously defend itself in unmeritorious actions, like the one that was dismissed with prejudice today,” Riordan said. “It is often the victim of baseless claims by those thinking there is easy money to be extorted.”

Representatives for the parties didn’t immediately respond to requests for comment on Tuesday.

Hutson is represented by Alan S. Clarke and Anthony R. Motta.

BIG, Poppa, EMI, Bad Boy and WMG are represented by Staci J. Riordan, Julian Petty, Neal Gauger and Seth Berman of Nixon Peabody LLP. UMG is represented by Andrew H. Bart and Christine Lee of Jenner & Block LLP.

The case is Hutson et al. v. The Estate of Christopher Wallace et al., case number 1:14-cv-02307, in the U.S. District Court for the Southern District of New York.

Source: Law360.com