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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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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Johnson v. Wright, No. 05 C 3943, 2007 WL 1079063 (N.D. Ill. Apr. 5, 2007) (Grady, J.).

Judge Grady denied defendants' Fed. R. Civ. P. 12(b)(1) motion to dismiss plaintiff's amended complaint for lack of subject matter jurisdiction.  Defendants, record companies and related individuals, were accused of infringing plaintiff Syl Johnson's copyright in his song "Is It Because I'm Black," as well as related state law claims.  Defendants argued that there was not federal jurisdiction because the co-owners of Johnson's copyright had transferred their rights to one of the defendants.  The transfer, defendants argued, destroyed Johnson's federal copyright claim, leaving only state claims over which the Court lacked independent jurisdiction.  But defendants conceded that Johnson stated a claim for federal copyright infringement.  The Court held that Johnson's and defendants' alleged co-ownership of the copyright was an affirmative defense, not a jurisdictional matter.  Because Johnson had a well-pled claim of federal copyright infringement, the Court denied defendants' Rule 12(b)(1) motion to dismiss.  The Court also noted that defendants' motion was "essentially" a copyright infringement summary judgment motion, but because it was styled as a Rule 12(b)(1) motion on the pleadings, Johnson was not given adequate opportunity to present his response.  Additionally, the Court identified several questions of fact that would have prevented a grant of summary judgment based upon the exhibits attached to the parties' briefs.

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