Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Johnson v. Cypress Hill, No. 03 C 9452, Slip Op. (N.D. Ill. Jul. 7, 2008) (Norgle, J.).

Judge Norgle struck defendants’ motion to dismiss plaintiff Johnson’s copyright infringement claim. The Court previously denied summary judgment as to the other plaintiffs, Watts and Jones - click here to read the Blog's prior post about that opinion. Plaintiffs authored the song “Is It Because I’m Black” in 1968 and recorded a version of it in 1969 (the “Song”).  Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed their copyright in the Song by using parts of it in their Black Sunday album.
 

Johnson’s copyright claim is based upon a 1997 registration for a compilation of songs allegedly containing the Song. But a review of a certified copy of Johnson’s compilation from the Copyright Office proved the Song was not on the deposited compilation. Because the Song was not a part of the registered work, Johnson could not show ownership of a valid copyright. The Court, therefore, dismissed the claim.
 

The Court also held that Johnson’s failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant because Congress deleted the Notice of Use requirement effective January 1, 1978, before any alleged infringement occurred.

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Watts v. Cypress Hill, No. 03 C 9452 & 06 C 3348, 2008 WL 2540811 (N.D. Ill. Apr. 28, 2008) (Norgle, J.).

Judge Norgle denied defendants’ motion for summary judgment on plaintiff’s copyright infringement claim. Defendants’ motion was based upon three arguments: 1) plaintiffs did not have a valid copyright registration; 2) plaintiffs’ suit was barred by the statute of limitations; and 3) plaintiffs failed to file a Notice of Use as required by the 1909 Copyright Act. Plaintiffs authored the song “Is It Because I’m Black” in 1968, and recorded a version of it in 1969 (the “Song”). Plaintiffs alleged that defendants, including the musical group Cypress Hill (click here for some of the group’s music on their MySpace page), infringed plaintiffs’ copyright in the Song by using parts of it in their album titled Black Sunday.

Copyright Registration

Defendants argued that plaintiffs did not meet their burden of proving a valid copyright registration because instead of the registration certificate or a copy of the deposited CD, plaintiffs produced a printout of the Copyright Offices’ summary of their registration. Because defendants did not dispute the information in the summary, the Court denied summary judgment. The validity of the registration was a question of fact for the jury.

Statute of Limitations

As to plaintiff Watts, defendants argued that Watts’s claim fell outside the Copyright Act’s three year statute of limitations because Watts contacted the Copyright Office in April 2003 to inquire about the status of his copyright in the Song, more than three years before Watts’ June 20, 2006 filing date. During his deposition, Watts testified:

• That he was not aware of the alleged infringement when he contacted the Copyright Office;
   
• That he contacted the Copyright Office just to check on the status of his copyright; and
   
• That his contact with the Copyright Office was prompted by learning of the alleged infringement.

The Court held that this contradictory evidence would allow a jury to draw an inference for either party, making summary judgment inappropriate. The Court also denied summary judgment as to plaintiff Jones. The court found no evidence that Jones did know or reasonably should have known of the alleged infringement in April 2003.

Notice of Use

Plaintiffs’ failure to file a Notice of Use pursuant to the 1909 Copyright Act was irrelevant. Congress deleted the Notice of Use requirement effective January 1, 1978, long before any alleged infringement occurred.

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Judge Ashman struck plaintiffs' expert report pursuant to Fed. R. Civ. P. 37(c)(1). Plaintiffs' authored the song "Is It Because I'm Black" in 1968. Plaintiffs' alleged that defendants, the musical group Cypress Hill (click here for some of the group's music on their MySpace page), infringed their copyright in the song by using parts of it in their Black Sunday album. Cypress Hill contended that plaintiffs sold the copyright pursuant to a 1969 songwriters contract. Plaintiffs argued that the contract was a fraud.

Plaintiffs submitted an expert report (the "Report") to support that the contract was fraudulent. In six paragraphs, the expert stated that he ran various tests and concluded that the 1969 contract was a fraud because it was printed and signed by an inkjet printer — inkjet printers were developed in the 1970s or 1980s. When Cypress Hill complained that the Report was incomplete, plaintiffs supplemented it with pictures of the testing.

But the Court held that the supplemented Report was not sufficient because it did not explain the expert's methodology. There was no way to know how the expert translated data into conclusions. And no reputable rebuttal expert could test the expert's methodology or opine that the data was misinterpreted. It did not matter that the missing information could likely be obtained in a deposition. Rule 26 requires that an expert report include "the basis and reasons" for the expert's opinions. Because the Report did not disclose the expert's methodology and reasoning, and because Cypress Hill was prejudiced by the late-served, incomplete Report, the Court struck the Report.

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