Don't Mess With the Black Eyed Peas or 17 USC 505

It sometimes happens that potential plaintiffs are dismayed by my reticence in taking their copyright infringement case – even when they assume they have a clear-cut case.  From now on I may suggest to these potential litigants that they read the sad case of Bryan Pringle v. William Adams Jr., et al. 

            In that case, Pringle sued Adams, better known as Will.i.am  and his band, the Black Eyed Peas (as well as their producer and record label and various other publishers) claiming that their hit "I Gotta  Feeling," infringed upon his song “Take a Dive”. 

            I have not read the entire procedural history of the case but it seems that Pringle's cause of action was doomed from the beginning due to an issue regarding an improper copyright registration.  Sections 411 and 412 of the Copyright Act mandate registration as a prerequisite of a copyright infringement lawsuit. 

            However, after Pringle lost the case on summary judgment,  Will.i.am  and his compatriots asked the court to order Pringle to pay their attorney's fees incurred in  defending the action. This  resulted in an award of $1 million to Will.i.am, $1.3 million to producer David Guetta and $500,000.00 to the band's label Interscope.  For some reason Fergie lost out on recovering her attorney's fees. 

            This is the harsh reality of the Copyright Act.  Section 505 of the Act states, ". . . the court may also award a reasonable attorney's fee to the prevailing party as part of the cost" and since John Fogerty successfully defended  his case against Saul Zaentz, this has been a key ingredient of infringement litigation and a deterrent to anyone considering bringing all but the strongest cases.  Conversely, it can also serve as an incentive to settle early if you are the defendant in other types of infringement litigation. 

            It is often hard to convince a songwriter that what he hears as a "substantial similarity" between his song and someone else's song may to the ears of an expert musicologist not be similar at all – or while similar may not be original enough to qualify for copyright protection.  If you add to this the specter of having to pay the other side's attorney's fees the concept of seeking justice (real or perceived) becomes much less attractive. 

John Fogerty and Saul Zaentz

Saul Zaentz died a few weeks ago at the age of 92.  He will be remembered  by many people as one of the founders of Fantasy Records, as well as a pioneering independent film producer (“One Flew Over the Cuckoo’s Nest,” “The English Patient,” and “The Lord of the Rings”, among others).

            And he brought Credence Clearwater Revival to the world.

            Among  legal scholars, he has a special place, due to his history of disputes with John Fogerty. 

            In one of the stranger courtroom battles of recent history, Zaentz sued Fogerty claiming his 1984 comeback hit “The Old Man Down the Road” infringed upon his own earlier composition “Run through the Jungle.”  Think that through for a minute. Fogerty prevailed but had he not, we would have had a precedent in this country which would make songwriters liable for infringing upon themselves. 

            Fogerty’s next action against Zaentz had an even more profound impact.  He sought reimbursement for his attorneys’ fees as the prevailing party in the litigation.  Although the Copyright Act awards attorneys’ fees to the “prevailing party” in a copyright infringement action, up until that time,  it had always been assumed that a defendant could only recover attorneys’ fees if the plaintiff’s action had been frivolous or filed in bad faith.  Both the trial court and the court of appeals took this position.  Fogerty appealed to the United States Supreme Court which ultimately ruled in his favor in a 9 – 0 decision, holding that  the Copyright Act contained no such caveat on a prevailing party’s right to seek reimbursement of attorneys’ fees.  It is widely believed that this important decision led to a marked decline in the number of copyright infringement lawsuits being filed since the risk of losing could make that party liable for the other party’s attorneys’ fees.

            Interestingly enough, Fogerty and Zaentz were involved in at least one other major dispute.  Record geeks know that the first pressing of Fogerty’s album “Centerfield” contained a song titled “Zanz Can’t Dance” about a larcenous pig (there’s even a video).   Fogerty later changed the title to “Vanz Can’t Dance” but not before Saul Zaentz filed a $140 million defamation lawsuit against him.  Wisely,  that case was settled out of court but if it had proceeded to trial, would have made for an interesting transcript.

            We owe John Fogerty a huge debt for standing up and taking a bold stance for artist’s rights and making at least two important contributions to copyright law.

Revenge of the Bratz

I remember reading a few years back that the Mattel Toy Company has obtained an injunction against the makers of the Bratz dolls because of their alleged similarity to the Barbie Doll. I was confused-on the surface the two dolls are not at all similar. The case, Mattel v. MGA was premised upon Mattel’s argument that the Bratz dolls infringed upon Mattel’s copyrights’ among other claims. Ultimately, Mattel’s argument was based upon the mistaken premise that one can assert a copyright in a mere idea or concept. Remember that this is the same company which unsuccessfully sued a group for recording the song “Barbie Girl”.

The kicker to the Bratz case is that in prevailing, the Bratz manufacturer was awarded a judgment for its costs and attorneys fees in the amount of $137,000,000 (yes, one hundred thirty seven million.I triple checked it.) Section 505 of the Copyright Act provides that the prevailing party in a copyright infringement case is entitled to petition the court for an award of its costs and attorneys fees. This point was famously demonstrated in the case Fantasy v. Fogerty, wherein John Fogerty recovered his attorney’s fees in defending himself against his former publisher’s erroneous claim that he had somehow infringed his own work.

This is the reason one has to be dead certain of their legal position before instituting a copyright infringement case and it is, I believe, one of the main deterrents to more frivolous copyright lawsuits being filed. Still, if you can afford to pay $137 million in legal fees, I guess deterrence is not really an issue.