Case 2:21-cv-01165-SVW-MAA Document 40-1 Filed 01/24/22 Page 1 of 32 Page ID #:484

Richard S. Busch (SBN 319881)

E-Mail: [email protected]
KING & BALLOW
1999 Avenue of the Stars, Suite 1100
Los Angeles, CA 90067
Telephone: (424) 253-1255
Facsimile: (888) 688-0482
Attorney for Plaintiff

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

DWIGHT YOAKAM, an individual, Case No: 2:21-cv-1165-SVW (MAA)

Plaintiff, Assigned to the Honorable Stephen

V. Wilson
vs.

WARNER RECORDS, INC., a Delaware MEMORANDUM OF POINTS

Corporation; and RHINO AND AUTHORITIES IN
ENTERTAINMENT COMPANY, a SUPPORT OF PLAINTIFF’S
Delaware Corporation. MOTION FOR SUMMARY
JUDGMENT
Defendants.
Hearing Date: February 14, 2022
Time: 1:30 P.M.
Courtroom: 10A

Complaint filed: February 9, 2021

First Amended Complaint filed:
March 29, 2021
Second Amended Complaint Filed:
July 23, 2021
Second Amended [Corrected]
Complaint Filed: July 26, 2021

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TABLE OF CONTENTS

I. PRELIMINARY STATEMENT ............................................................................ 1

II. STATEMENT OF FACTS ..................................................................................... 3

III. LEGAL STANDARD ............................................................................................ 6

IV. DISCUSSION ......................................................................................................... 7

A. PLAINTIFF IS ENTITLED TO A DECLARATION FROM THIS

COURT THAT THE NOTICE IS VALID AND EFFECTUAL............... 7

1. Plaintiff Timely Issued His Copyright Notice ................................. 8

2. Plaintiff’s Scrivener’s Error is a Harmless Error............................. 9

B. PLAINTIFF IS ENTITLED TO A DECLARATION FROM THIS

COURT THAT THE WORKS AT ISSUE DO NOT CONSTITUTE
WORKS MADE FOR HIRE ................................................................... 12

1. Section 203 Governs Any Work Made for Hire Arguments ......... 12

2. The Works at Issue are Sound Recordings Under the Copyright

Act ................................................................................................. 13

3. The Works at Issue are Not Works Made for Hire as Defined by
the Copyright Act .......................................................................... 13

i. No Employee-Employer Relationship Exists Between

Plaintiff and Warner and/or Rhino .............................. 14

ii. Plaintiff’s Performance of Any Purported Employee

Obligations Does Not Constitute Work Prepared by an
Employee Within the Scope of Such Purported
Employment................................................................. 16

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iii. The Works at Issue Do Not Constitute Expressly

Ordered/Commissioned Works that Fall Within One of
the Nine Statutorily Designated Categories................. 18

C. DEFENDANTS COMMIT COPYRIGHT INFRINGEMENT BY

EXPLOITING PLAINTIFF’S WORKS AFTER THEIR RESPECTIVE
EFFECTIVE TERMINATION DATES .................................................. 21

1. Defendants Commit Direct Infringement by Continuing to Make

the Works at Issue Available on DSPs Beyond Their Respective
Effective Termination Dates .......................................................... 22

2. Defendants Commit Contributory Infringement by Knowing of,

and Materially Contributing to and/or Inducing Third Party
Infringement .................................................................................. 23

3. Should the Court Not Find Copyright Infringement, It Should

Allow Plaintiff to Replead Conversion ......................................... 25

V. CONCLUSION..................................................................................................... 25

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TABLE OF AUTHORITIES
Federal Cases
Aetna Life Ins. Co. of Hartford v. Haworth, 300 U.S. 227, 239-240 (1937).................. 8
Aymes v. Bonelli, 980 F.2d 857, 861 (2d Cir. 1992) .................................................... 15
Ballas v. Tedesco, 41 F. Supp. 2d 531 (D.N.J. 1999)................................................... 19
Bell v. Wilmott Storage Servs., LLC, Nos. 19-55882, 19-56181, 2021 U.S. App.
LEXIS 27127 at *1074 (9th Cir. Sep. 9, 2021) ...................................................... 22, 23
Capitol Records, LLC v. BlueBeat, Inc., 765 F. Supp. 2d 1198, 1203-1204 (C.D. Cal.
2010) ............................................................................................................................. 22
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986) ................................................... 6, 7
China Cent. TV v. Create New Tech. (HK) Ltd., No. CV 15-01869 MMM (MRWx),
2015 U.S. Dist. LEXIS 76005 (C.D. Cal. June 11, 2015) ............................................ 24
Columbia Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1032-33 (9th Cir. 2013) ...... 24
Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 740-741 (1989) ............. 15, 16
Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991) ............................ 21
Gov’t Emples. Ins. Co. v. Dizol, 133 F.3d 1220, 1223 (9th Cir. 1998) .......................... 7
Hardwick v. Complete Skycap Servs., 247 Fed. Appx. 42, 43 (9th Cir. 2007) .............. 7
Johansen v. Sony Music Entm’t Inc., 2020 WL 1529442 (S.D. N.Y. 2020) ................ 11
JustMed, Inc. v. Byce, 600 F.3d 1118 (9th Cir. 2010) .................................................. 14
Maloney v. T3Media, Inc., 853 F.3d 1004, 1010 (9th Cir. 2017) ................................... 3
MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D. Cal. 2007) ............ 25
Music Sales Corp. v. Morris, 73 F. Supp. 2d 364 (S.D.N.Y. 1999) ............................. 10
Nationwide Mut. Ins. Co. v. Darden, 503 U.S. 318, 324 (1992) .................................. 15
NLRB v. United Ins. Co. of Am., 390 U.S. 254, 258 (1968) ......................................... 15
Oracle Am., Inc. v. Hewlett Packard Enter. Co.,
971 F.3d 1042, 1050 (9th Cir. 2020) .................................................................... 23

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Parapluie, Inc. v. Mills, 555 Fed. Appx. 679, 681 (9th Cir. 2014) ................................ 7
Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir. 2007) ................ 24
Perfect 10, Inc. v. Visa Int'l Serv. Ass'n, 494 F.3d 788, 795 (9th Cir. 2007) ............... 23
Public Affairs Associates v. Rickover, 369 U.S. 111, 112 (1962) .................................. 8
Public Serv. Comm'n of Utah v. Wycoff Co., 344 U.S. 237, 250 (1952) ........................ 8
Ray Charles Found. V. Robinson, 795 F.3d 1105, 1112 (9th Cir. 2015) ............... 1, 2, 8
Rosenbaum v. Washoe County, 663 F.3d 1071, 1075 (9th Cir. 2011) ........................... 6
S.A. Empresa v. Walker Kidde & Co., 690 F.2d 1235, 1238 (9th Cir. 1982) ................ 7
Shropshire v. Canning, 809 F. Supp. 2d 1139 (N.D. Cal. 2011).................................. 22
Siegel v. Warner Bros. Entm't, Inc.,658 F. Supp. 2d 1036 (C.D. Cal. 2009) ............... 10
Singh v. Nanayakkara, No. 2:13-cv-09220-ODW (ASx), 2014 U.S. Dist. LEXIS
27730 (C.D. Cal. Mar. 4, 2014) .................................................................................... 25
Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 672 (1950) ............................. 8
Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020) ........................................... 20
VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 732 (9th Cir. 2019) ......................... 22, 23
Wolf v. Travolta, 167 F. Supp. 3d 1077, 1090 (C.D. Cal. 2016) .................................. 21
Federal Statutes
17 U.S.C. Section 101 ................................................................................ 12, 13, 17, 18
17 U.S.C. Section 102 .................................................................................................. 21
17 U.S.C. Section 106 .................................................................................................. 21
17 U.S.C. Section 106(1) .............................................................................................. 22
17 U.S.C. Section 106(3) .............................................................................................. 22
17 U.S.C. Section 106(6) .............................................................................................. 22
17 U.S.C. Section 203 .................................................................................................... 8
17 U.S.C. Section 203(a) .............................................................................................. 13

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17 U.S.C. Section 203(a)(3) ....................................................................................... 2, 9

17 U.S.C. Section 203(a)(4)(a) ................................................................................... 8, 9
17 U.S.C. Section 203(a)(4)(B) ...................................................................................... 9
17 U.S.C. Section 203(b) ................................................................................................ 8
17 U.S.C. Section 304(c) ........................................................................................ 12, 13
28 U.S.C. Section 2201 .................................................................................................. 7
37 CFR Section 201.3(c) .............................................................................................. 10
37 C.F.R. § 201.10(e)(1) ........................................................................................ 10, 11
37 C.F.R. § 201.10(e)(1) .............................................................................................. 10
37 CFR Section 201.10(f)............................................................................................... 9
37 CFR Section 201.10(f)(1)(i)(A)-(B) ........................................................................ 10
37 CFR Section 201.10(f)(1)(ii) ................................................................................... 10
Foreign Authorities
2 William F. Patry, PATRY ON COPYRIGHT § 5:74 (2007) ...................................... 16, 18
2 William F. Patry, PATRY ON COPYRIGHT § 5:61 (2007) ............................................ 16
2 William F. Patry, COPYRIGHT LAW & PRACTICE 1147 (2007) .................................. 24
3 Melville B. Nimmer, NIMMER ON COPYRIGHT Section 11.02 (2021) ........................ 20
3 William F. Patry, PATRY ON COPYRIGHT § 7:45 (2008) ............................................ 10
H.R. Rep. No. 94–1476, at 130 (1976) ....................................................................... 3, 8
Kathryn Starshak, It’s the End of the World as Musicians Know It, or Is It? Artists
Battle the Record Industry and Congress to Restore Their Termination Rights in
Sound Recordings, 51 DEPAUL L. REV. 71, 108 (2001)................................................ 20
Patrik Wikström & Robert Burnett, Same Songs, Different Wrapping: The Rise of the
Compilation Album, 32 POPULAR MUSIC & SOC’Y 507 (2009) .................................... 20
U.S. Copyright Office, Circular 14: Copyright in Derivative Works and Compilations
1 (2020) ........................................................................................................................ 20

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MEMORANDUM OF POINTS AND AUTHORITIES

I. PRELIMINARY STATEMENT
Plaintiff Dwight Yoakam (“Plaintiff”) moves for summary judgment on his claims
for declaratory relief and copyright infringement against Defendants Warner Records,
Inc. and Rhino Entertainment Company (individually, “Warner” and “Rhino”, and,
collectively, “Defendants”). As explained in further detail below, Plaintiff seeks
declaratory judgment that: (i) Plaintiff’s February 5, 2019 copyright termination notice
(the “Notice”) is effective both as to the two singles “Honky Tonk Man” and “Miner’s
Prayer” (the “Two Singles”), and for each of the sound recordings on the album Guitars,
Cadillacs Etc., Etc., (the “Album),” which also includes the Two Singles; (ii) the
copyright in each work contained within the Notice automatically returned to Plaintiff
as of each works’ respective termination date; (iii) the works referenced in Plaintiff’s
Notice are not “works for hire”; (iv) sound recordings cannot be considered “works made
for hire” under the definitions in Section 101 of the United States Copyright Act of 1976
(“Copyright Act”); and (v) Plaintiff is not now and has never been an employee of
Warner in any event, meaning his work on the Singles and the Album are not works
made for hire as a matter of law. Furthermore, this civil action was commenced for
copyright infringement because Defendants failed their legal obligations by authorizing
and/or making available for reproduction, distribution, and public performance (1) the
Two Singles and the Album, and (2) Plaintiff’s “Honky Tonk Man” music video
(collectively, the “Works at Issue”) without Plaintiff’s consent or authorization as of
these works’ respective effective termination dates. At the core of these causes of action
are Defendants’ brazen attempts to disregard Plaintiff’s valid Notice, a statutory
mechanism established under Section 203 of the Copyright Act (“Section 203”) for the
purpose of protecting creators in Plaintiff’s exact scenario. See Ray Charles Found. V.
Robinson, 795 F.3d 1105, 1112 (9th Cir. 2015).

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In this case, the powerful record industry should be told that it must adhere to
Congress’s intent that authors have the right to reclaim their intellectual property
regardless of the fact that the record labels do not want to give those rights up after
making untold billions of dollars from these artists’ work. Plaintiff issued the Notice to
the proper addressee, his record label and then-owner of the copyright in the Works at
Issue, and properly included the statutorily required contents of such notice to terminate
their interest. The below chart illustrates the effective recapture dates for Plaintiff’s
copyrights in the Works at Issue under Section 203.
WORK AT ISSUE DATE OF EXECUTION DATE OF PUBLICATION NOTICE DATE RECAPTURE WINDOW
OF THE GRANT (Notice of termination may (Termination will be
be served as early as TEN effective as early as
years before and as late as publication date +35 years
TWO years before and as late as publication
effective date of date +40 years)
termination)

“Honky Tonk Man” November 22, 1985 January 31, 1986 February 5, 2019 January 31, 2021-
January 31, 2026

“Miner’s Prayer” November 22, 1985 January 31, 1986 February 5, 2019 January 31, 2021-
January 31, 2026

“Guitars, Cadillacs, November 22, 1985 March 3, 1986 February 5, 2019 March 3, 2021-
Etc. Etc.” March 3, 2026

“Honky Tonk Man” November 22, 1985 March 3, 1986 February 5, 2019 March 3, 2021-
(music video) March 3, 2026

As discussed fully below, the Notice is binding and effective, and resulted in
Defendants’ rights in the Two Singles being terminated on February 5, 2021, and all
songs on the Album, which includes the Two Singles (SSUF ¶ 20-25, 34), being
terminated on March 3, 2021. 17 U.S.C. Section 203(a)(3); Ray Charles Found., 795
F.3d at 1112 (termination date is 35 years after publication). Defendants have also
infringed on the Two Singles and the Album by authorizing its reproduction and

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distribution and publicly performing them after the effective Termination date.1 Each of
the defenses Defendants have heretofore raised (and that Plaintiff expects will raise again
in response to this motion), are wrong as a matter of law and underscore the depths to
which they will sink to desperately hang on to Plaintiff’s intellectual property.
II. SUMMARY OF FACTS
Plaintiff is a songwriter, recording artist, musician, and pioneer in country
music. (SSUF ¶ 1). From 1983-1984, Plaintiff arranged and performed “Honky Tonk
Man,” and wrote, recorded, and self-published “Miner’s Prayer” and his debut album,
“Guitars, Cadillacs, Etc. Etc.” (SSUF ¶¶ 4-6). “Guitars, Cadillacs, Etc., Etc.” was
originally released by Oak Records in 1984. (SSUF ¶ 11). In 1985, Plaintiff entered into
a recording agreement with Warner (the “1985 Agreement” attached hereto as Exhibit
1) for his services as a recording artist. (SSUF ¶ 13). Upon signing the 1985 Agreement,
Warner rereleased “Guitars, Cadillacs, Etc. Etc.” as the Album without coordinating,
arranging, or selecting any of the sound recordings that were included. (SSUF ¶¶ 28-36).

1
As decided in this Court’s Order Granting in Part and Denying in Part Defendants’
Motion to Dismiss dated July 12, 2021 (this “Court’s Order”), Plaintiff could not
replead his conversion claim in his Second Amended Complaint because the rights
asserted were deemed equivalent to the rights contained in 17 U.S.C. Section 106. See
Maloney v. T3Media, Inc., 853 F.3d 1004, 1010 (9th Cir. 2017) (citing H.R. Rep. No.
94–1476, at 130 (1976). Specifically, the Court’s Order notes that conversion claims
often fall outside the scope of preemption because conversion requires proof of
“wrongful possession or disposition of a particular piece of property,” but that “[t]he
gravamen of Plaintiff’s complaint is that Defendants are interfering with Plaintiff’s
rights in property because they are refusing to acknowledge the termination of his
copyright grant.” (Court’s Order at 16). Now, at Summary Judgment, Plaintiff supports
the position that Defendants commit copyright infringement by exercising control over
Plaintiff’s copyright beyond the effective termination dates of the Works at Issue. As
discussed more fully below, to the extent that the Court finds that Defendants did not
commit an infringing act after the termination dates, which they did, or that maintaining
possession, exercise and control over Plaintiff’s property is not copyright infringement
per se, then Plaintiff should be allowed to proceed with the conversion claim.
Defendants should not be able to have it both ways.
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The only difference between the original release and re-release of “Guitars, Cadillacs,
Etc., Etc.” is that the re-release included four new tracks that were recorded and
engineered by Plaintiff. (SSUF ¶¶ 28-36). On this note, Defendants did not contribute
any direction, recording services, or any other meaningful creative form of effort toward
the creation and re-release of the Album. The Two Singles were recorded and included
on the Album at Plaintiff’s sole creative direction. (SSUF ¶ 20-25, 34). In other words,
Plaintiff made every creative decision involved in the creation of the Album (SSUF ¶
20-25, 34), and Defendants cannot claim that they made any contribution to the Album
that constitutes an original work of authorship.
On February 5, 2019, Plaintiff issued the Notice for the Works at Issue to
Defendants. (SSUF ¶ 44). The effective termination dates listed in the Notice were
January 31, 2021 for the Two Singles, and March 3, 2021, for the Album. (SSUF ¶¶ 46-
47). The effective termination dates of the Notice came and went, yet Defendants
continue to willfully ignore Plaintiff’s notice. (SSUF ¶¶ 54-56). Although the Notice’s
chart of Plaintiff’s works provided January 31, 2021 as the effective termination date for
the Two Singles (SSUF ¶ 46), February 5, 2021 would be the earliest effective
termination date for them based on the date of the Notice. While the issue about this
scrivener’s error is effectively moot because the Two Singles appear on the Album
(SSUF ¶¶ 28, 30) and there is no arguable infirmity with respect to the Album, this 5-
day error is harmless. In discovery responses in which Defendants were asked to identify
any harm they suffered with respect to the 5-day error, Defendants2 stated:

“[p]laintiff’s failure to comply with the statutory timing requirements

relating to service rendered the notice invalid. If Defendants are nonetheless
required to comply with the notice despite its invalidity—i.e., despite
Plaintiff’s failure to comply with the statutory timing requirements—then
they are necessarily harmed. Defendants are harmed because they are faced
2
Warner and Rhino provided identical discovery responses on this issue.
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with the choice of either disclaiming and forgoing copyright interests to

which they are contractually entitled and for which Plaintiff was paid
substantial consideration (thereby losing, without compensation and
without any valid legal obligation to do so, the ongoing value of that
investment), or incurring substantial fees and costs in defending against a
claim of copyright infringement premised on an invalid notice. Moreover,
Congress afforded copyright owners the protection of at least two years of
notice, with that time period specifically tied to the putative “effective date
of termination” stated in a putative notice of termination. Copyright owners
are entitled to rely upon the putative “effective date of termination” stated
in a notice and, if the notice is not served in a manner that satisfies the
timing requirements of the Copyright Act in light of such “effective date of
termination,” to rely upon the notice’s resulting invalidity. A copyright
owner that is precluded from relying on a putative author’s obligation to
comply with the statutory requirements is necessarily harmed because the
copyright owner is thereby deprived of the precise protection afforded to it
by Congress in the statute.”

See Warner’s Response to Plaintiff’s Interrogatories, Set Two No. 26.

This response is pure circular Orwellian doublespeak, and represents Defendants’
best, but woefully inadequate attempt, to address this Court’s comment in denying their
Motion to Dismiss that they had not articulated any harm from the 5-day error. (See
Court’s Order at 9-12). The circular and illogical reasoning of Defendants, in English,
seems to be that they are harmed because if this Court concludes that the miscalculation
is harmless error, then they are being forced to comply with an allegedly ineffective
notice, and requiring them to comply with an allegedly defective notice, means that they
must relinquish their expired rights in the Works, and that harms them. So essentially
Defendants claim that losing this case harms them, and that is why the Court should not
find harmless error. Nonsense. Defendants simply do not want to admit in litigation, as
they must, that Defendants suffered no conceivable harm with respect to the 5-day error
on the Two Singles (no such error exists on the Album that contains the Two Singles
making the issue moot in any event), and will say anything to try to avoid relinquishing

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this very valuable property. The material purpose served by the Notice to recapture the
copyright in each of the Works at Issue was served as discussed below, and Defendants’
internal and (lack of) external responses to Plaintiff demonstrated their awareness of
their obligations pursuant to Section 203. (SSUF ¶¶ 54-56).3
Finally, Defendants authorized the Works at Issue for sale, streaming, and/or
download and public performance on the digital service providers (“DSPs”) Spotify,
Apple Music, Amazon Music, Napster, and on their own YouTube channel. (SSUF ¶
63). Following their respective effective termination dates, the Two Singles remained
available on Spotify, the Album remained available on Napster and YouTube, and the
“Honky Tonk Man” music video remained available on YouTube. Defendants earned
domestic revenues beyond these dates. (SSUF ¶¶ 77-78). With each passing day that
Defendants maintain dominion and control over Plaintiff’s intellectual property, Plaintiff
is severely damaged by his inability to exploit it, and Defendants commit willful
copyright infringement, or alternatively conversion.
III. LEGAL STANDARD
Federal Rule of Civil Procedure Rule 56(a) states that “[t]he court shall grant
summary judgment if the movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a matter of law.” “Summary
judgment will be granted. . .where ‘the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the affidavits, if any, show that
there is no genuine issue as to any material fact and that the moving party is entitled to
judgment as a matter of law.’” Rosenbaum v. Washoe County, 663 F.3d 1071, 1075 (9th
Cir. 2011) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986)). “Once the movant

3
Indeed, years after the Notice was sent, but prior to this action being commenced,
Defendants’ in-house counsel stated that Defendants were still considering whether to
honor the February 5 Termination Notice, but had not said anything in the two years
between its issuance and then. (SSUF ¶¶ 54-56).
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has met [his or her] initial burden of showing ‘an absence of evidence’ supporting the
nonmovant party’s case, the burden is on the nonmoving party to show with ‘specific
facts’ that there is a genuine issue of fact suitable for trial.” Parapluie, Inc. v. Mills, 555
Fed. Appx. 679, 681 (9th Cir. 2014) (citing Celotex, 477 U.S. at 325). In reviewing a
motion for summary judgment, the court must view the facts in the light most favorable
to the non-moving party. Hardwick v. Complete Skycap Servs., 247 Fed. Appx. 42, 43
(9th Cir. 2007). “However, the non-moving party may not rest upon the mere allegations
or denials of the [] party’s pleading, but. . . must set forth specific facts showing that
there is a genuine issue for trial.” Id. (citations omitted). “A party cannot manufacture a
genuine issue of material fact merely by making assertions in its legal memoranda.” Id.
(quoting S.A. Empresa v. Walker Kidde & Co., 690 F.2d 1235, 1238 (9th Cir. 1982)).
IV. DISCUSSION
In the present case, Plaintiff challenges Defendants’ goliath mentality that the
federal copyright law does not penetrate their corporate shield. Defendants’ attempt to
delay and/or prevent Plaintiff’s recapture of his copyright in the Works at Issue has been
equally personally and financially violative to Plaintiff. (SSUF ¶ 73). While Defendants
would have the creative community believe that they are true partners at the time they
enter grants of copyright ownership, they are clearly willing to say and do anything to
avoid reversion of their interest back to those creatives under Section 203.
A. PLAINTIFF IS ENTITLED TO A DECLARATION FROM THIS
COURT THAT THE NOTICE IS VALID AND EFFECTUAL
Pursuant to 28 U.S.C. Section 2201, a Court may declare the rights and other legal
relations of any interested party seeking such declaration whether or not further relief is,
or could be, sought. Any such declaration shall have the force and effect of a final
judgment or decree and shall be reviewable as such. Id. The Declaratory Judgment Act
“embraces both constitutional and prudential concerns.” Gov’t Emples. Ins. Co. v. Dizol,

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133 F.3d 1220, 1223 (9th Cir. 1998). A lawsuit seeking federal declaratory relief must
first present an actual case or controversy within the meaning of Article III, section 2 of
the United States Constitution, and such a lawsuit must also fulfill statutory jurisdictional
prerequisites. Aetna Life Ins. Co. of Hartford v. Haworth, 300 U.S. 227, 239-240 (1937);
Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 672 (1950). If the suit passes
constitutional and statutory muster, the district court must also be satisfied that
entertaining the action is appropriate. Dizol, 133 F.3d at 1223. This determination is
discretionary, for the Declaratory Judgment Act is "deliberately cast in terms of
permissive, rather than mandatory, authority." Public Serv. Comm'n of Utah v. Wycoff
Co., 344 U.S. 237, 250 (1952) (J. Reed, concurring). The Declaratory Judgment Act
"gave the federal courts competence to make a declaration of rights; it did not impose a
duty to do so." Public Affairs Associates v. Rickover, 369 U.S. 111, 112 (1962).
1. Plaintiff Timely Issued His Copyright Termination Notice.
Section 203 allows authors to terminate grants of copyright assignments and
licenses that were made on or after January 1, 1978 so long as certain conditions are met.
See 17 U.S.C. Section 203. The right of termination was “designed to ‘safeguard []
authors against unremunerative transfers. . . needed because of the unequal bargaining
position of authors, resulting in part from the impossibility of determining a work’s value
until it has been exploited.” Ray Charles Found., 795 F.3d at 1112 (2015) (quoting H.R.
Rep. No. 94-1476, at 124 (1976)). “Effective termination causes ‘all rights. . . that were
covered by the terminated grants [t]o revert to the author, authors, and other persons
owning termination interests. . ..’” Id. at 1113 (quoting 17 U.S.C. Section 203(b)).
Notice of copyright termination under Section 203 must be served on the grantee
or the grantee’s successor-in-interest no more than 10 nor less than 2 years before the
effective date of termination. 17 U.S.C. Section 203(a)(4)(a). Termination of a copyright
grant may be effected any time during a period of five years beginning at the end of

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thirty-five years from the date of execution of the grant; or, if the grant covers the right
of publication of the work, the period begins at the end of thirty-five years from the date
of publication of the work under the grant or at the end of forty years from the date of
execution of the grant, whichever term ends earlier. 17 U.S.C. Section 203(a)(3). Several
procedural and substantive requirements must be met for an author to recapture
previously granted copyright interests. Here, the publication date of the Two Singles is
January 31, 1986. (SSUF ¶¶ 26-27), so the effective termination date for the Two Singles
may fall between January 31, 2021 and January 21, 2026. See 17 U.S.C. Section
203(a)(3). Plaintiff needed to provide notice at least two years before any effective
termination date within that window. See 17 U.S.C. Section 203(a)(4)(a). Plaintiff’s
Notice is dated February 5, 2019 (SSUF ¶¶ 44-45), a date that clearly supports an
effective window for termination of the Two Singles. Therefore, the Notice constitutes
timely notice of termination for the Two Singles. Defendants complain, however, that
the actual termination date is listed as January 31, 2021 instead of February 5, 2021, and
that this supposedly invalidates the Termination. Defendants are wrong.
2. Plaintiff’s Scrivener’s Error is a Harmless Error.
Section 203 contemplates that further details about the “form, content, and manner
of service” of the termination notice will be “prescribe[d] by regulation” of the Register
of Copyrights. 17 U.S.C. Section 203(a)(4)(B). Any termination submitted to the U.S.
Copyright Office (the “Office”) for recordation must comply with the Copyright Act’s
statutory requirements and the Office’s regulations (37 CFR Section 201.10(f)),
including that the submitted notice must be a true, correct, complete, and legible copy of
the signed notice of termination as served on the grantee or successor in title,
accompanied by a statement setting forth the date on which the notice was served and
the manner of service (unless such information is contained in the notice itself), be timely
served, have an effective date of termination that is later than the date of recordation,

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and accompanied by the correct filing fee as specified by CFR Section 201.10. 37 CFR
Section 201.10(f)(1)(i)(A)-(B); 37 CFR Section 201.10(f)(1)(ii); 37 CFR Section
201.3(c). In turn, it makes most sense to firstly address the regulatory requirements
prescribed by the Register of Copyrights. Here, Plaintiff submitted his termination notice
to be recorded with the Office on December 8, 2020 in accordance with the guidance
above. (SSUF ¶ 52). In Siegel v. Warner Bros. Entm't, Inc., following an exhaustive
analysis of the “harmless error” rule contained in 37 C.F.R. § 201.10(e)(1), the court
held that even though the plaintiff’s copyright termination notice did not comply with
the regulatory requirements, the notice nonetheless was adequate for providing
defendants a “reasonable opportunity” to identify what works were the subject of the
termination notice. 658 F. Supp. 2d 1036 (C.D. Cal. 2009) (“The purpose of the
regulations is to give the recipient of the termination notice sufficient information to
understand what rights of theirs may or may not be at stake.”). Moreover, even if a
copyright termination notice’s genericness does not “reasonably identify the grant,” a
court may still find it adequate based on a customary acceptance of such genericness by
the Register of Copyrights. Id. (relying on Music Sales Corp. v. Morris, 73 F. Supp. 2d
364 (S.D.N.Y. 1999); 3 William F. Patry, PATRY ON COPYRIGHT § 7:45 (2008)). Thus,
Plaintiff fully and completely satisfied the regulatory requirements despite the
scrivener’s error.
Given that Plaintiff’s notice followed the Register of Copyright’s procedural
requirements, it now makes sense to address why Plaintiff’s scrivener’s error on the
Notice constitutes a harmless error. One such regulation prescribed by the Register of
Copyrights addresses harmless errors in notices of termination. See 37 C.F.R. Section
201.10(e) (“The harmless error regulation provides that “[h]armless errors in a notice. .
. shall not render the notice invalid. . . [f]or purposes of this paragraph, an error is
‘harmless’ if it does not materially affect the adequacy of the information required to

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serve the purposes of 17 U.S.C. [Section] 203 [or other termination provisions]).” As
recognized by the Court in the Court’s Order, the harmless error regulation is limited to
“harmless errors in a notice” and makes clear that it understands a “notice” to mean a
“document communicating to the grantee an intent to terminate, from errors in
complying with the statutory requirements for termination.” See Court’s Order at 8
(citing 7 C.F.R. § 201.10(e)).
On this note, in the Court’s Order, this Court disagreed with Defendants that the
harmless error rule cannot be invoked to cure an error in the effective date of termination
listed in an author’s notice of termination. See Court’s Order at 7 (“. . .the error alleged
by Plaintiff plausibly falls within the ambit of the harmless error regulation, and excusing
Plaintiff’s error in this case is consistent with the statutory termination requirements in
section 203.”). Finally, the Court makes clear a case-specific inquiry is required to
determine whether the Notice was adequate to “serve the purposes” of the termination
provision. See Court’s Order at 9 (citing 37 C.F.R. § 201.10(e)). The Court concludes
that Defendants failed to offer any reason why Plaintiff could not show that an error in
communicating an effective termination date in a notice did “not materially affect the
adequacy of the information required to serve the purposes of 17 U.S.C. [Section] 203.”
See Court’s Order at 9 (citing 37 C.F.R. § 201.10(e)).
As the Court’s Order notes, one persuasive case to have addressed the question of
whether a scrivener’s error could constitute a harmless error is Johansen v. Sony Music
Entm’t Inc. See Court’s Order at 9 (citing 2020 WL 1529442 (S.D. N.Y. 2020)). In that
case, the plausibility of harmlessness is highlighted by the fact that only one work was
affected by the alleged scrivener’s error. Id. Here, the same is true, as the Two Singles
belong to a single row of the chart provided in the Notice. (SSUF ¶ 48). Further, there is
no basis for Defendants to claim that the error left them with no reasonable opportunity
to identify the Two Singles and the Notice’s intended purpose. The date of the Notice is

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a proper effective termination date for the Two Singles and its contents identify which
copyrights Plaintiff intended to recapture. (SSUF ¶ 44-48). Moreover, over a year after
receipt of the Notice, Defendants attempted to renegotiate new terms with Plaintiff.
(SSUF ¶ 53-56). The information required to serve the Notice’s purpose was adequate,
and there is certainly no deficiency that materially affected such information.
Accordingly, the Notice constitutes valid and effectual termination of Defendants’
copyright interests in the respective Works at Issue.
B. PLAINTIFF IS ENTITLED TO A DECLARATION FROM THIS
COURT THAT THE WORKS AT ISSUE DO NOT CONSTITUTE
WORKS MADE FOR HIRE
In consideration of his valid Notice, Plaintiff became the sole owner of the Two
Singles on February 5, 2021, and the Album and the “Honky Tonk Man” music video
on March 3, 2021. While this should be the end of the story with respect to all the Works
at Issue, it is worth revisiting that the Two Singles are both sound recording contributions
to the Album (SSUF ¶ 20-25, 34), which means they reverted back to Plaintiff on March
3, 2021 (the effective termination date of the Album) regardless of the scrivener’s error.
Still, Defendants may proffer secondary reasons that attempt to allow them to continue
claiming ownership in the Works at Issue beyond February 5, 2021. Defendants may
argue that some or all of Works at Issue are “works made for hire” under Section 101 of
the Copyright Act and therefore Plaintiff has no statutory right to terminate their interest.
In doing so, Defendants may allege that Plaintiff agreed to work as an employee of
Warner or that his Works at Issue constituted works made for hire under the 1985
Agreement. The facts do not support either of these reasons.
1. Section 203 Governs Any Work Made for Hire Arguments.
Pre-1978 grants of rights in sound recordings fixed on or after February 15, 1972,
but before January 1, 1978 may be subject to termination under Section 304(c) of the

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Copyright Act, provided the sound recording was not created as a work made for hire.
See 17 U.S.C. Section 304(c). Post-1977 grants of rights in sound recordings fixed on or
after February 15, 1972 may be subject to termination under Section 203 of the
Copyright Act provided (i) the grant was executed by the author of the sound recording
and (ii) the author did not create the sound recording as a work made for hire as defined
by the Copyright Act. See 17 U.S.C. Section 203(a). Here, the grant of rights in the sound
recordings occurred after 1977 for sound recordings fixed after February 15, 1972.
(SSUF ¶ 4, 6, 13). Accordingly, Section 203 of the Copyright Act will govern the work
for hire arguments presented by Plaintiff and Defendants over the sound recordings
subject to this dispute.
2. The Works at Issue are Sound Recordings Under the Copyright Act.
It must first be addressed whether each of the Works at Issue constitute sound
recordings under and with respect to Section 101 definitions of the Copyright Act.
“Sound recordings” are “works that result from the fixation of a series of musical,
spoken, or other sounds. . . regardless of the nature of the material objects. . . in which
they are embodied.” Per this definition of “sound recordings” and industry and custom,
the Works at Issue (whether in the form of so-called “singles” or an album), plainly
constitute sound recordings. 17 U.S.C. Section 101 (definition of “sound recordings”).
3. The Works at Issue are Not Works Made for Hire as Defined by the
Copyright Act.
Under Section 101 of the Copyright Act, a “work made for hire” is either (1) a
work prepared by an employee within the scope of his or her employment; or (2) a work
"specially ordered or commissioned for use as a contribution to a collective work, as part
of a picture or other audiovisual work, as a translation, as a supplementary work, as a
compilation, as an 'instructional text', as a test, as answer material for a test, or as an
atlas, if the parties expressly agree in a written instrument signed by them that the work

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shall be considered a work made for hire.” 17 U.S.C. § 101 (definition of “work made
for hire”). Therefore, the relevant analyses at Summary Judgment are whether (i) an
employee-employer relationship exists between Plaintiff and Warner and/or Rhino, (ii)
Plaintiff’s performance of his obligations under the 1985 Agreement constitutes work
prepared by an employee within the scope of his employment, and (iii) the Works at
Issue constitute expressly ordered/commissioned works that fall under one of the nine
statutorily designated categories.
(i) No Employee-Employer Relationship Exists Between Plaintiff
and Warner and/or Rhino.
Plaintiff has never been an employee of either Warner or Rhino for any purpose.
(SSUF ¶ 15-17, 19-23). The 1985 Agreement lacks a definite consistent provision stating
that Plaintiff is an employee of Warner or Rhino for the purpose of recording sound
recordings. (SSUF ¶ 15, 18). With respect to the specific provisions of the 1985
Agreement, Paragraph 6(a) of the 1985 Agreement entered by Plaintiff and Warner
(executed under its former name of Warner Bros. Records, Inc.) expressly states that the
artist is granting copyrights in sound recordings to the label as an employee for hire.
(SSUF ¶ 18), while Paragraph 14 reads, “[n]othing herein contained shall constitute
a partnership between or joint venture by the parties hereto, or constitute either
party the agent or employee of the other.” (SSUF ¶ 15). On these terms alone, Plaintiff
never rendered his artist services as an employee of Defendants.
Still, when examined through the lens of common law and statutory agency
criteria, the 1985 Agreement between Plaintiff and Warner does not render Plaintiff an
employee of either Warner or Rhino. In copyright cases arising under the Copyright Act,
the Supreme Court has ruled that absent any textual indications to the contrary, when
Congress uses the terms “employee,” “employer,” or “scope of employment,” it means
to incorporate principles from the general common law of agency. JustMed, Inc. v. Byce,

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600 F.3d 1118 (9th Cir. 2010) (citing Cmty. for Creative Non-Violence v. Reid, 490 U.S.
730, 740-741 (1989). Thus, “the hiring party's right to control the manner and means by
which the product is accomplished” is the central inquiry. Cmty. for Creative Non-
Violence, 490 U.S. at 751. The factors relevant to this inquiry include (1) the skill
required for that occupation, (2) the source of the instrumentalities and tools, (3) the
location of the work, (4) the duration of the relationship between the parties, (4) whether
the hiring party has the right to assign additional projects to the hired party, (5) the extent
of the hired party's discretion over when and how long to work, (6) the method of
payment, (7) the hired party's role in hiring and paying assistants, (8) whether the work
is part of the regular business of the hiring party, (9) whether the hiring party is in
business, (9) the provision of employee benefits, and (10) the tax treatment of the hired
party. Id. at 751-52 (citing Restatement (Second) of Agency § 220(2) (1958)).
As the common-law test contains no shorthand formula or magic phrase that can
be applied to find the answer, all the incidents of the relationship must be assessed and
weighed with no one factor being decisive. Nationwide Mut. Ins. Co. v. Darden, 503
U.S. 318, 324 (1992) (quoting NLRB v. United Ins. Co. of Am., 390 U.S. 254, 258 (1968))
(quotation marks and alteration omitted); see also Aymes v. Bonelli, 980 F.2d 857, 861
(2d Cir. 1992) (“It does not necessarily follow that because no one factor is dispositive
all factors are equally important, or indeed that all factors will have relevance in every
case. The factors should not merely be tallied but should be weighed according to their
significance in the case.”).
Indeed, nearly all these factors weigh in favor of Plaintiff. Significantly, Plaintiff
arranged and performed “Honky Tonk Man,” and wrote and recorded “Miner’s Prayer,”
and the original “Guitars, Cadillacs, Etc. Etc.” before entering into the 1985 Agreement
(SSUF ¶¶ 4-6). Accordingly, at no point after Plaintiff and Warner entered the 1985
Agreement did Defendants provide any location in which, or any tools or

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instrumentalities with which he created the pre-existing “Miner’s Prayer” and the
original “Guitars, Cadillacs, Etc. Etc.” (SSUF ¶ 10). With respect to “Honky Tonk
Man,” Warner merely financed a studio session in which Plaintiff recorded his long-
performed work. (SSUF ¶ 10, 74). The independent creation process occurring before
the term of the 1985 Agreement demonstrates the skill of Plaintiff, as well as there being
no relationship between Plaintiff and Defendants during the creation of the Works of
Issue. 2 William F. Patry, PATRY ON COPYRIGHT § 5:74 (2007). Throughout the term of
the 1985 Agreement, Defendants had no right to assign additional projects to Plaintiff
(SSUF ¶ 19), any discretion over when or how long Plaintiff worked (SSUF ¶¶ 20-21),
or any role in hiring or paying assistants for Plaintiff’s creative process (SSUF ¶¶ 10,
22-23). Moreover, throughout the term of the 1985 Agreement, Defendants compensated
Plaintiff via royalties earned by the success of the exploitation of Plaintiff’s work (SSUF
¶ 41), which surely constitutes a non-traditional method of payment with respect to an
employee. 2 PATRY ON COPYRIGHT § 5:61 (“Where payment is solely by royalties, this
fact weighs against an employment relationship.”). Finally, Defendant offered no
employee benefits to Plaintiff (SSUF ¶ 17) and provided no employee-based tax
treatment (SSUF ¶ 16). Under this prevailing common law analysis, the facts only allow
for the conclusion that no employer-employee relationship exists between Plaintiff and
Defendants.
(ii) Plaintiff’s Performance of Any Purported Employee
Obligations Does Not Constitute Work Prepared by an
Employee Within the Scope of Such Purported
Employment.
Per the above, Plaintiff and Defendants never entered an employer-employee
relationship, either expressly or under the controlling common law agency test. Cmty.
for Creative Non-Violence, 490 U.S. 730, 751. For good measure, Plaintiff further

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addresses the point that to the extent that an employer-employee relationship existed
pursuant to the 1985 Agreement or the common law agency test, that his performance of
any purported obligations never constituted work prepared by an employee within the
scope of any purported employment. See 17 U.S.C. Section 101 (definition of “work
made for hire”).
To recall, the only provisions of the 1985 Agreement potentially relevant to this
dispute are the somewhat conflicting Paragraphs 6(a) and 14. Paragraph 6(a) merely
states that Plaintiff is an employee for hire to the extent that he grants copyrights in
sound recordings to the label (SSUF ¶ 18), which has no relevancy to the creation
process of sound recordings, including the Works at Issue. Then, Paragraph 14 of the
1985 Agreement expressly rejects the possibility that either party is the agent or
employee of the other. (SSUF ¶ 15). The conflicting nature of these provisions and
encompassing nature of Paragraph 14 weigh in Plaintiff’s favor that he never rendered
his performance services as an employee pursuant to 1985 Agreement’s terms. To the
extent that any written employer-employee relationship involves the creation of sound
recordings by Plaintiff for Defendants, again, Plaintiff entered the 1985 Agreement with
Warner after long independently writing and recording “Miner’s Prayer” and “Guitars,
Cadillacs, Etc., Etc.” and arranging and performing “Honky Tonk Man.” (SSUF ¶¶ 4-
6). Therefore, the Works at Issue cannot constitute work prepared by an employee within
the scope of any purported employment pursuant to any express agreement. With respect
to the common law agency test, there is simply no reasonable argument that Defendants
established an unwritten employer-employee with Plaintiff. To the extent that any
unwritten employer-employee relationship relying on the common law agency test
involves the creation of sound recordings by Plaintiff for Defendants to own and exploit,
Plaintiff entered the 1985 Agreement after independently creating the Works at Issue.
(SSUF ¶¶ 4-6). Therefore, the Works at Issue cannot constitute work prepared by an

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employee within the scope of any purported employment pursuant to the common law
agency test. Given that Plaintiff cannot constitute an employee of either Defendant under
the 1985 Agreement or common law agency test, Defendants may resort to one final
argument to qualify the Works at Issue as works made for hire. This remaining argument
is that Plaintiff’s Works at Issue constitute expressly ordered/commissioned works
falling under one of the nine statutorily designated categories, namely compilations
and/or collective works. See 17 U.S.C. Section 101 (definition of “work made for hire”).
They don’t.
(iii) The Works at Issue Do Not Constitute Expressly
Ordered/Commissioned Works that Fall Within One of the
Nine Statutorily Designated Categories.
The full language under sub-part (ii) of the definition of “work made for hire”
under Section 101 of the Copyright Act provides that a work made for hire must
constitute “a work specially ordered or commissioned for use as a contribution to one of
the following nine categories: [1] for use as a contribution to a collective work, [2] as a
part of a motion picture or other audiovisual work, [3] as a translation, [4] as a
supplementary work, [5] as a compilation, [6] as an instructional text, [7] as a test, [8]
as answer material for a test, or [9] as an atlas, if the parties expressly agree in a written
instrument signed by them that the work shall be considered a work made for hire.” At
this point in the analysis, Defendants must resort to qualifying sound recording works,
an unenumerated category, into this definition.
Firstly, Defendants never expressly ordered/commissioned the Works at Issue.
(SSUF ¶ 10, 15-17, 19-23). As mentioned, the Works at Issue were each materially
created by Plaintiff before entering into the 1985 Agreement. (SSUF ¶¶ 4-6). This fact
alone is sufficient to determine that the Works at Issue were not specially ordered. 2
PATRY ON COPYRIGHT § 5:74 (“. . .a very important, and usually determinative factor is

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whether the work was substantially completed at the time it was allegedly specially
ordered. . . [i]f the work has not been begun before the parties meet, this fact weighs in
the hiring party's favor.”). By this same reasoning, there is no express term in the 1985
Agreement ordering the Works at Issue. Accordingly, Plaintiff need not further address
whether any specific provision of the 1985 Agreement constitutes an express
order/commission of the Works at Issue by Defendants.
For good measure, any potential argument by Defendants that sound recordings
constitute works made for hire under the Copyright Act goes against (1) established case
law concluding that sound recordings cannot constitute works made for hire and (2)
Congressional intent. In Ballas v. Tedesco, a case commonly cited for the proposition
that a musical sound recording cannot be a work made for hire, the court held that the
musical CD at issue was not a work made for hire because: “[T]he sound recordings, and
the relationship between the parties, d[id] not fall under either of the two statutory
definitions of a work for hire. . . [Additionally,] the sound recordings are not a work for
hire under the second part of the statute because they do not fit within any of the nine
enumerated categories, and because there was no signed written agreement between the
parties. 41 F. Supp. 2d 531 (D.N.J. 1999). With respect to Congressional intent, sound
recordings are not specifically included in the nine categories of commissioned works
enumerated in the Copyright Act of 1976. Artists and labels generally argue over the two
possible applicable categories: contributions to compilations and/or collective works.
To recall, the Copyright Act defines a compilation as “a work formed by the
collection and assembling of preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting work as a whole constitutes an
original work of authorship” and includes collective works. 17 U.S.C. §101 (definition
of “compilation). A collective work is then defined as “a work, such as a periodical issue,
anthology, or encyclopedia, in which a number of contributions, constituting separate

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and independent works in themselves, are assembled into a collective whole.” 17 U.S.C.
§101 (definition of “collective work”). An album is a unitary whole, and as such, it
cannot be considered a compilation. See Kathryn Starshak, It’s the End of the World as
Musicians Know It, or Is It? Artists Battle the Record Industry and Congress to Restore
Their Termination Rights in Sound Recordings, 51 DEPAUL L. REV. 71, 108 (2001)
(“[A]n album lacks the necessary creativity to be considered an ‘original work of
authorship.’”). There are arguably scenarios in which an album could fall within the
definition of a compilation (e.g., a holiday album comprised of pre-existing master
recordings of individual compositions by different artists). See Skidmore v. Led
Zeppelin, 952 F.3d 1051 (9th Cir. 2020). (“Likewise a protectable ‘compilation’ is the
precise ‘result[]’ that is ‘formed by the collection and assembling of preexisting
materials. . . that are selected, coordinated, or arranged.’”). 17 U.S.C. § 101. A movie
soundtrack, “greatest hits,” or “top hits” album may constitute a compilation, but not an
original album. See 3 Melville B. Nimmer, NIMMER ON COPYRIGHT Section 11.02
(2021); see also U.S. Copyright Office, Circular 14: Copyright in Derivative Works and
Compilations 1 (2020) (attached hereto as Exhibit 2). Indeed, recording industry
executives employ the term “compilation” to market and sell a certain type of album,
which is usually a patchwork of songs from various artists, or at times the same artist
but different original albums, revolving around a similar theme— whether it be genre,
popularity, era, etc. See generally Patrik Wikström & Robert Burnett, Same Songs,
Different Wrapping: The Rise of the Compilation Album, 32 POPULAR MUSIC & SOC’Y
507 (2009). Here, Plaintiff’s independently created Works at Issue do not fall under such
a scenario. Defendants’ potential position that all sound recordings are collective works
or compilations simply because there are multiple separate contributions made in the
creation of a sound recording, and/or because the record label rearranges the master
recordings of individual compositions delivered by the artist, lacks professional and

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academic integrity.
C. DEFENDANTS COMMIT COPYRIGHT INFRINGEMENT BY
EXPLOITING PLAINTIFF’S WORKS AFTER THEIR RESPECTIVE
EFFECTIVE TERMINATION DATES
Copyright protection extends only to “original works of authorship.” Wolf v.
Travolta, 167 F. Supp. 3d 1077, 1090 (C.D. Cal. 2016) (quoting 17 U.S.C. Section 102).
It is foundational that to prevail on Plaintiff’s copyright infringement claim, he must
show that he owns a valid copyright in the claimed work. See Feist Pubs., Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361 (1991). Section 106 of the Copyright Act provides,

“. . . the owner of copyright under this title has the exclusive rights to do
and to authorize any of the following: (1) to reproduce the copyrighted work
in copies or phonorecords. . . (3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other transfer of ownership, or by
rental, lease, or lending. . . (6) in the case of sound recordings, to perform
the copyrighted work publicly by means of a digital audio transmission.”

Here, Defendants infringe upon Plaintiff’s copyrights in the Works at Issue as a

result of the Notice on an ongoing basis, directly or contributorily. Defendants directly
infringe upon Plaintiff’s copyright in the Works at Issue by authorizing their distribution,
reproduction, and public performance, and then by failing to remove the Works at Issue
from their respective digital service providers (“DSP”), or contributorily infringed upon
Plaintiff’s copyright when they knew or should have known that the respective DSP
hosting the Works at Issue failed to remove them after the occurrence of their respective
effective termination dates, resulting in Defendants’ authorization of the infringing
conduct. Specifically, Defendants committed copyright infringement pursuant to the
below acts after the effective termination dates of the respective Works at Issue- Warner
either authorized these third parties to offer these Works at Issue for sale, download,
stream, or made the Works at Issue available themselves.
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On February 9, 2021, Plaintiff’s management identified that the Two Singles were
still available for sale, streaming, and download on the DSP Spotify. (SSUF ¶ 65). On
March 12, 2021, Plaintiff’s management identified that sound recordings from the
Album and the “Honky Tonk Man” music video were still available for sale, streaming,
and/or download on DSP YouTube on Defendants’ parent company’s (Warner Music
Group) official Dwight Yoakam channel (and were still available on January 24, 2021
with increased view counts) (SSUF ¶ 80), and that sound recordings from the Album
were still made available for sale, streaming, and/or download on DSP Napster (and
were still available on October 30, 2021). (SSUF ¶¶ 67-68). Defendants received
domestic revenues from these sources after the effective termination dates. (SSUF ¶¶
77-79). Still, regardless of whether Defendants received revenues past these dates, it is
not necessary that the public receive the performance for an infringing performance to
occur. Bell v. Wilmott Storage Servs., LLC, Nos. 19-55882, 19-56181, 2021 U.S. App.
LEXIS 27127 at *1074 (9th Cir. Sep. 9, 2021). Further, providing infringing content to
YouTube’s California-based servers from anywhere in the world creates domestic
liability. See Shropshire v. Canning, 809 F. Supp. 2d 1139 (N.D. Cal. 2011).
1. Defendants Commit Direct Infringement by Continuing to Make
the Works at Issue Available on DSPs Beyond Their Respective
Effective Termination Dates
To establish direct infringement liability, the plaintiff must show that the
defendant caused the infringement. See VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723, 732
(9th Cir. 2019) (“[D]irect infringement requires ‘active’ involvement.”). Streaming
and/or offering sound recordings for sale violates the right to reproduce, distribute, and
publicly perform the Works at Issue. Capitol Records, LLC v. BlueBeat, Inc., 765 F.
Supp. 2d 1198, 1203-1204 (C.D. Cal. 2010); 17 U.S.C. Section 106 (1), (3), (6).
Interactive streaming and transmission implicates those rights. See id. Copyright

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infringement is a strict liability tort, so innocent intent constitutes no defense to liability.

Bell, LEXIS 27127 at *1081 (9th Cir. Sep. 9, 2021). Controlling or selecting material
for upload, download, transmission, or storage is volitional [for the purposes of
infringing]. Id. As established, Plaintiff is the exclusive owner of the Two Singles as of
February 5, 2021, and the Album and “Honky Tonk Man” music video as of March 3,
2021 pursuant to the Notice.4 Defendants authorized the streaming, sale, and/or
download of the Works at Issue on DSPs before their effective termination dates,
including Spotify and Napster, and had the sole contractual responsibility to successfully
remove them on their effective terminate dates, and also publicly performed the Works
at Issue on their own YouTube channel following termination. (SSUF ¶¶ 62-65). Those
distributions following termination infringed on Plaintiff’s Section 106 exclusive rights.
2. Defendants Commit Contributory Infringement by Knowing of,
and Materially Contributing to and/or Inducing Third Party
Infringement
A defendant may be held contributorily liable for copyright infringement carried
out by another. Oracle Am., Inc. v. Hewlett Packard Enter. Co., 971 F.3d 1042, 1050
(9th Cir. 2020). If there is a threshold showing of direct infringement by a third party,
liability for contributory copyright infringement requires that a defendant: (1) has
knowledge of another's copyright infringement; and (2) either (a) materially contributes
to the infringement, or (b) induces the infringement. VHT, Inc., 918 F.3d at 745; Perfect
10, Inc. v. Visa Int'l Serv. Ass'n, 494 F.3d 788, 795 (9th Cir. 2007). Here, Defendants
authorized the Works at Issue for exploitation on third party DSPs (SSUF ¶ 64) and are
therefore ultimately responsible for them remaining on the sites regardless of any action
they took to try to remove them. Defendants’ excuse is that they “communicated via

4
Copyright registrations for each of the Works at Issue are attached hereto as Exhibit
3 (“Honky Tonk Man”), Exhibit 4 (“Miner’s Prayer”), Exhibit 5 (“Guitars, Cadillacs,
Etc. Etc.”), and Exhibit 6 (“Honky Tonk Man” music video).
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industry-standard extensible markup language (XML) feed to each [DSP] that each
[DSP] was no longer authorized to exploit the [Two Singles]. . ..” See Warner’s
Response to Plaintiff’s Interrogatories, Set Two No. 31.5 Even if a DSP failed to remove
works following these communications, Defendants had both actual (visibility of Two
Singles on the DSPs) and constructive knowledge (revenues) (SSUF ¶¶ 65-68, 70-71,
77-80). As mentioned, in some cases, Defendants themselves controlled content
featuring the Work(s) at Issue. (SSUF ¶¶ 67-68). Thus, Defendants knew of the
infringing use, and the DSP’s were only able to exploit the Works through Defendants’
authorization.
With respect to the second element, Defendants’ authorization, regardless of any
action they took to remove them, constitutes material contribution to and/or inducement
of the DSPs. A defendant materially contributes to infringement when it fails to take
steps to protect the copyrighted works. China Cent. TV v. Create New Tech. (HK) Ltd.,
No. CV 15-01869 MMM (MRWx), 2015 U.S. Dist. LEXIS 76005 (C.D. Cal. June 11,
2015) (relying on Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1172 (9th Cir.
2007) (“assist[ing] a worldwide audience of users to access infringing materials”
constitutes material contribution). Further, merely providing the means for infringement
may be sufficient to incur contributory liability. See 2 William F. Patry, COPYRIGHT LAW
& PRACTICE 1147 (2007). Inducement requires distribution of a product with the object
of promoting its use to infringe copyright, infringement, and causation. Columbia
Pictures Indus., Inc. v. Fung, 710 F.3d 1020, 1032-33 (9th Cir. 2013). Defendants
materially contributed and/or induced infringement by providing the Works at Issue to
the third party DSPs specifically to exploit them, which ultimately caused infringement
beyond the effective termination date. (SSUF ¶¶ 63-68). Defendants are thus liable for
contributory infringement. Defendant’s past infringement and maintained control

5
Rhino provided the same response to Plaintiff’s Interrogatories, Set Two No. 28.
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renders the Works at Issue particularly vulnerable to continued infringement and harms
Plaintiff. See MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D. Cal. 2007)
(finding that defendant’s exercise of control over a plaintiff’s works interferes with
plaintiff’s overall exercise of their rights).
3. Should the Court Not Find Copyright Infringement, It Should
Allow Plaintiff to Replead Conversion
Plaintiff originally pled a claim for conversion due to Defendants’ exercise of
dominion and control over his works following their effective termination dates. The
Court dismissed that claim finding that the conversion claim was subsumed within the
copyright infringement claim. (Court’s Order at 16) (“The gravamen of Plaintiff’s
complaint is that Defendants are interfering with Plaintiff’s rights in property because
they are refusing to acknowledge the termination of his copyright grant.”). In the event
the Court finds that Defendants’ conduct does not constitute infringement because they
did not commit an infringing act after the effective termination date, which they did, or
that the maintaining of dominion and control over the Works at Issue does not itself
constitute continued direct and continued infringement, then Plaintiff respectfully
requests the right to amend the First Amended Complaint to reassert his claim for
conversion. Where the underlying nature of Plaintiff’s conversion claim is a business
dispute, as it is here, the issue of Defendants’ wrongful control of Plaintiff’s intellectual
property is not part and parcel to copyright infringement. See Singh v. Nanayakkara,
No. 2:13-cv-09220-ODW (ASx), 2014 U.S. Dist. LEXIS 27730 (C.D. Cal. Mar. 4,
2014).
V. CONCLUSION
For the foregoing reasons, this Court should rule that Plaintiff is entitled to a grant
of summary judgment in his favor on these issues.

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DATED: January 24, 2022 Respectfully submitted,

/s/ Richard S. Busch

Richard S. Busch
KING & BALLOW
Attorney for Plaintiff
Dwight Yoakam

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