May v. Sony Music Entm't

399 F.Supp.3d 169

Michael MAY a.k.a. Flourgon, Plaintiff,

v.SONY MUSIC ENTERTAINMENT; Destiny Hope Cyrus a.k.a. Miley Ray Cyrus; Smiley Miley, Inc.; Theron Thomas; Timothy Thomas; Michael Len Williams II a.k.a. Mike Will Made It / Mike Will; and Larry Rudolph, Defendants.

18-cv-2238 (LAK) (RWL)

United States District Court, S.D. New York.

Signed June 28, 2019

ORDER

Lewis A. Kaplan, United States District Judge

This matter is before the Court on defendants' motion to dismiss plaintiff's second amended complaint for failure to state a claim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure.¹

Magistrate Judge Robert W. Lehrburger has rendered a well considered report and recommendation in which he recommends that defendants' motion be GRANTED to the extent it bars the recovery of damages for any infringement occurring prior to March 13, 2015 and DENIED in all other respects.²

Defendants raise three principal objections to Judge Lehrburger's recommendations. They argue that Judge Lehrburger should have concluded that: (1) the works in question are not substantially similar; (2) defendants' use qualifies as a fair use; and (3) plaintiff is not entitled to an award of statutory damages or attorneys fees.³

Defendants' first two objections are without merit and are overruled.

With regard to defendants' third objection, Section 412 of the Copyright Act imposes a bright-line rule barring the recovery of statutory damages and attorneys fees for infringement occurring after registration if that infringement is part of an ongoing series of infringing acts and the first act occurred before registration. See Steele v. Bell , 2014 WL1979227 (S.D.N.Y. 2014) ; Shady Records, Inc. v. Source Enterprises, Inc. , 2005 WL 14920 (S.D.N.Y. 2005). The Court has carefully reviewed this matter and determined that because defendants' first alleged infringement occurred in 2013—four years before plaintiff registered the work in question—application of the bright-line rule precluding the award of statutory damages and attorneys fees is appropriate in this case.

Accordingly, defendants' motion to dismiss the second amended complaint [DI 51] is granted to the extent that plaintiff's claims for statutory damages, attorneys fees, and damages for any infringement occurring prior to March 13, 2015 are dismissed. It is denied in all other respects.

SO ORDERED.

REPORT AND RECOMMENDATION ON MOTION TO DISMISS

ROBERT W. LEHRBURGER, United States Magistrate Judge

TO THE HONORABLE LEWIS A. KAPLAN, United States District Judge:

This case is about whether the phrase "We Run Things, Things Don't Run We" used in the chart-topping 2013 song "We Can't Stop" co-written and performed by Miley Cyrus infringes Michael May's copyright in his hit 1988 song "We Run Things." Cyrus and her co-defendants have moved to dismiss May's complaint for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). Alternatively, Defendants seek a ruling that even if May has a viable claim, he cannot recover statutory damages or attorneys' fees, and his damages are limited by the applicable three-year statute of limitations. For the reasons set forth below, I recommend that Defendants' motion to dismiss be DENIED with respect to infringement, fair use, statutory damages and attorney's fees and GRANTED with respect to limiting pre-suit damages to a three-year period.

Factual Background ¹

A. May and "We Run Things"

May, also known as Flourgon, is a Jamaican songwriter and recording artist who released hit reggae singles in the late 1980s and 1990s.² In the 1980s, May performed as a disc jockey and created his own sound system sets and authored his own lyrics.³ At the start of that period, in or about 1981, May created, originated and authored "We run things. Things no run we" as a lyrical phrase included in his performances (the "Phrase").⁴ Several former sound system colleagues or associates of May assert that May originated the Phrase and that none of them were aware of the Phrase being previously used.⁵

The Phrase is a combination of English language and Jamaican Patois dialect. Phonetically, in strict Patois, the Phrase would be "Wi run tings. Tings nuh run wi."⁶ The SAC is ambiguous as to whether May merely adapted the Phrase "We run things. Things no run we" from the Jamaican Patios saying "Wi run tings. Tings nuh run wi," or whether May originated the Phrase from whole cloth.⁷ At oral argument, however, May's counsel expressly rejected conceding the notion that May adapted the Phrase from a pre-existing strict Patois version of the same phrasing.⁸

In 1988, May incorporated the Phrase into a song entitled We Run Things.⁹ The Phrase appears nine times in the song, particularly in the repeated chorus.¹⁰ May's song was publicly released in 1988, became a No. 1 hit in Jamaica, and garnered "great acclaim" outside Jamaica, including in the United States.¹¹ In 1999, May "permitted" We Run Things to be used in the soundtrack of a Jamaican action-crime film.¹² May registered We Run Things with the United States Copyright Office in 2017, shortly before filing this lawsuit.¹³

May alleges that the theme of the Phrase and We Run Things is "an attitude of personal freedom and situational control, where an individual need not be constrained by fear or reproach as he/she is not controlled or ruled by one's circumstances."¹⁴ The lyrics of We Run Things , attached at the end of this opinion, celebrate personal freedom and control, mostly over money, other men and particularly women. Two such examples are:

We rule girl, girl no rule weThat's a fi girl, dem haffi respect we

But if a girl love me, that's a different fashionJahman she would haffi know she mi a di manWe come first and she come second

The phrase "We rule girl, girl no rule we" is repeated three times throughout We Run Things.

B. Cyrus and "We Can't Stop"

Miley Cyrus is a popular and successful American singer and songwriter.¹⁵ Cyrus co-wrote the song We Can't Stop , which was released in 2013 and achieved "meteoric success."¹⁶ We Can't Stop was re-released each year thereafter to the present.¹⁷ Cyrus's song celebrates female empowerment and includes lyrics such as "This is our house; this is our rules"; "Can't you see it's we who own the night"; "It's our party we can do what we want;" "It's our party we can say what we want; It's our party we can love who we want"; "We can kiss who we want."¹⁸ The lyric "We run things, things don't run we" appears three times in the song, each time in the chorus.

Cyrus has looked to multiple genres of music, including Caribbean music, to inspire her own work.¹⁹ In a 2015 interview, Defendants Theron and Timothy Thomas, songwriters and producers, and co-authors of We Can't Stop , explained that they incorporate Caribbean culture and melodies into their songs; and, in regard to We Can't Stop , mentioned "We run tings, tings don't run we" and "Hands inna di air like we don't care" as examples.²⁰

Cyrus and the other defendants are music industry professionals who are familiar with established industry practice, including licensing of song rights.²¹ According to the SAC, the Defendants knew or should have known that they needed to clear the rights to use the Phrase just as they cleared rights to use another song's phrase – "La Di Da Di" – for We Can't Stop.²²

We Can't Stop has been a "worldwide commercial success."²³ The song was Cyrus's "comeback" single with over five million copies sold.²⁴ The song's music video release set record-breaking numbers in viewing, and Cyrus continues to perform the song in her concerts and promotional appearances.²⁵

C. May's Copyright Infringement Claim

May's SAC asserts a single count of copyright infringement. The SAC repeatedly bases that claim on We Can't Stop 's incorporation of the Phrase,²⁶ and specifically compares the extent and nature of use of the Phrase in We Run Things and We Can't Stop.²⁷ May's "Lyrical Phrase Comparison" chart asserts that the Phrase is used nine times in May's song and also in the title of the song and in the hook of the repeated chorus, while Cyrus's song uses the Phrase three times in the hook of its repeated chorus.²⁸ We Can't Stop repeatedly uses "substantially similar phraseology" by using the literal English translation of the Phrase "while wholly maintaining the unique Patois phraseology."²⁹ The SAC also alleges that We Can't Stop employs the Phrase to convey the same theme as We Run Things ,³⁰ and also uses substantially the same "vocal melody/cadence/rhythm/inflection."³¹ The SAC does not, however, allege that We Can't Stop as a whole work infringes We Run Things as a whole work. May seeks injunctive relief, damages, attorney's fees and costs pursuant to the Copyright Act.

D. History Of The Phrase Apart From The Parties' Songs ³²

Various articles and literature indicate that the Phrase, or some variation of it, has a lengthy history and is well-recognized in Jamaican culture. For instance, "Wi run tings, tings nuh run we" is included in an online source of "Wise Jamaican Proverbs."³³ Similarly, a 2003 publication refers to " ‘we run tings, tings nuh run we" as an "old Jamaican proverb."³⁴ "Wi run tings, tings nuh run wi" also is defined in an online dictionary of Jamaican Patois.³⁵ And an article from a Jamaican news publication suggests that even May's attorneys recognize that the Phrase, at some point, became "commonly used" and "a part of Jamaican culture."³⁶ It is not clear how far back use of the Phrase or its variations go, but there is no dispute that the Phrase was widely accessible from multiple sources prior to the release of We Can't Stop in 2013.

E. Defendants' Motion To Dismiss

Defendants advance three primary arguments in support of their motion to dismiss on the merits. First, although the song We Run Things is copyrighted, the Phrase alone is not subject to copyright protection. Second, even if the Phrase were protectable, that protection is minimal, and there is no substantial...