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Date: 05-04-2023

Case Style:

Kathryn Townsend Griffin, et al. v. Edward Christopher Sheeran a/k/a "Ed Sheeran," et al.

Case Number: 1:17-cv-05221

Judge: Louis L. Stanton

Court: United States District Court for the Southern District of New York (Manhattan County)

Plaintiff's Attorney:

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Defendant's Attorney: Andrew Mark Goldsmith, Brain Maida, Donald S. Zakarin, Giovanna Maria Marchese, Ilene Susan Farkas

Description: New York, New York civil litigation lawyers represented plaintiffs who sued Defendants on copyright infringement theories under 17 U.S.C. 101.

Plaintiff Structured Asset Sales, LLC, as a beneficial owner of the copyright to the 1973 hit song "Let's Get It On," brings this action against Defendants Edward Christopher Sheeran, Atlantic Recording Corporation, BDi Music Ltd., Bucks Music Group Ltd, The Royalty Network, Inc., David Platz Music (USA) Inc., Amy Wadge, Jake Gosling, Mark "Spike" Stent, Chewietours LP, and Messina Touring Group, LLC (collectively, the "Sheeran Defendants"), principally alleging that the release and commercial exploitation of a substantially similar song, 2014's "Thinking Out Loud," violates its rights under federal copyright law. Plaintiff also alleges that the failure of Defendants Sony Corporation of America, Sony/ATV Music Publishing, EMI Music Publication, and Stone Diamond Music Corporation (collectively, the "Sony Defendants") to adequately protect its copyright constitutes a breach of administration and songwriting agreements to which it claims to be a third-party beneficiary. Now before the Court are Defendants' motions to dismiss the complaint.

Defendants move to dismiss the copyright infringement claim as duplicative of a suit that is currently pending in this District before Judge Louis L. Stanton. Plaintiff filed that suit in 2018, alleging that "Thinking Out Loud" infringes the 1973 copyright in "Let's Get It On" that is based only on that song's sheet music. In April 2020, after the Sony Defendants allegedly rebuffed multiple requests to expand the scope of that copyright, Plaintiff obtained a new copyright registration in "Let's Get It On," this time based on a studio recording of the hit song that supposedly contains musical elements not found in the sheet music. Plaintiff then filed this suit claiming that "Thinking Out Loud" infringes the 2020 copyright. Defendants insist that Plaintiff—who purchased its ownership stake in "Let's Get It On" from an heir of co-author Ed Townsend, Jr.—was not authorized to obtain that registration and that the lack of authorization defeats any claim of copyright ownership. The Court concludes that the 2020 registration sufficiently alleges Plaintiff's beneficial ownership in that copyright for purposes of this motion, and that the registration's incorporation of new musical elements precludes a finding that Plaintiff's two suits are duplicative. Nonetheless, in light of the significant overlap between the two actions, the Court stays the instant suit pending resolution of the action before Judge Stanton.

Additionally, the Sony Defendants move for dismissal of Plaintiff's remaining claims that the failure to enhance the copyright protection in "Let's Get It On" breached "Administration Agreements" and "Songwriting Agreements" that Plaintiff admits it has never seen but to which it claims to be a third-party beneficiary. In support of their motion, the Sony Defendants provide what they claim to be the true versions of these agreements, both of which disclaim the existence of third-party beneficiaries. Without even relying on those documents, the Court concludes that Plaintiff has failed to adequately plead that it was the beneficiary of any contract that may have been breached by Defendants' alleged actions with respect to the copyright. The motion to dismiss those claims is therefore granted.

The facts alleged in the complaint (the "Complaint") are assumed to be true for the purposes of this motion. See, e.g., Stadnick v. Vivint Solar, Inc., 861 F.3d 31, 35 (2d Cir. 2017). The Court also considers facts drawn from the relevant copyright registrations and agreements that are integral to the Complaint or were relied upon by Plaintiff in drafting it. See Faulkner v. Beer, 463 F.3d 130, 134 (2d Cir. 2006). Lastly, the Court takes judicial notice of related litigation in other courts. See Int'l Star Class Yacht Racing Ass'n v. Tommy Hilfiger U.S.A., Inc., 146 F.3d 66, 70 (2d Cir. 1998) ("A court may take judicial notice of a document filed in another court not for the truth of the matters asserted in the other litigation, but rather to establish the fact of such litigation and related filings." (internal quotation marks omitted)).

A. The Principal Parties

Plaintiff Structured Asset Sales, LLC ("SAS") is a California Limited Liability Company that "invests in and owns rights to thousands of songs and musical compositions." Compl. ¶ 6. SAS is the "beneficial owner of one-third of all of the copyright rights" of the late songwriter Ed Townsend Jr., including "Let's Get It On." See id. SAS purchased those rights from Townsend's son Clef Michael Townsend, who inherited a one-third share of his father's estate upon his 2003 death. Id. ¶ 23. That purchase was subsequently "approved by the probate court in California." Id.

Defendant Edward Sheeran, a well-known musician, songwriter, and producer living in the United Kingdom, co-wrote and recorded "Thinking Out Loud." Id. ¶¶ 24, 27, 31. Defendant Sony/ATV Music Publishing, LLC, a Delaware limited liability corporation with its principal place of business in New York, New York, is both the music publisher for "Thinking Out Loud" and administers "Let's Get It On" on a worldwide basis. Id. ¶ 25. Defendant Stone Diamond Music Corp. ("Stone Diamond") is "the copyright owner of the 'Let's Get It On' musical composition," and "one of two original owners of the composition listed on the 1973 registrations." Id. ¶ 34. Stone Diamond is now "part of the Sony Corporation family of companies." Id. ¶ 5.

B. 1973 Copyright Registration of "Let's Get It On."

The "Let's Get It On" musical composition was written and produced by Townsend and Marvin Gaye in 1973. Id. ¶¶ 8, 23. In 1973, the composition was twice registered with the United States Copyright Office (the "Copyright Office"). Id. ¶ 42. In each instance, the sheet music of the composition was used as the "deposit copy," i.e., the version of the work deposited with the Copyright Office, see 17 U.S.C. § 407. "A recording of the song was later made by Gaye, in 1973." Compl. ¶ 45. According to the 1973 registration, the first date of publication of "Let's Get It On" was February 14, 1973. See Dkt. 91, Declaration of Hillel I. Parness in Opposition to the Sheeran Defendants' Motion to Dismiss Count I of the Complaint ("Parness Decl."), Ex. 4 at 2-3. That registration lists Stone Diamond and Cherritown Music Co., Inc. ("Cherritown") as copyright claimants and Ed Townsend as the sole author. Id. The 1973 copyrights were automatically renewed in 2000. Compl. ¶ 42. "Let's Get It On" has since become "a world-famous composition and recording." Id. ¶ 320.

C. Ownership of the Rights to "Let's Get It On"

Plaintiff alleges upon information and belief that "Stone Diamond purchased the other half of the copyright and publishing rights of original co-owner Cherritown," making Stone Diamond the 100% copyright owner and publisher of the composition. Id. ¶ 34. In support of their motion to dismiss, Defendants have submitted an agreement indicating that Cherritown sold the entirety of its interest in "Let's Get It On" to Stone Diamond subsidiary Jobete Music Co. in 1988. See Dkt. 95, Reply Declaration of Audrey Ashby, Ex. 1 ("1988 Agreement"). Townsend apparently signed that agreement on behalf of Cherritown. Id. As of today, "Stone Diamond is the legal owner of the 'Let's Get It On' composition, while SAS is one of its beneficial owners." Compl. ¶ 334.

According to Plaintiff, "Sony/ATV is the worldwide administrator of the 'Let's Get It On' musical composition." Id. ¶ 380. Plaintiff alleges, upon information and belief, that "the scope of Sony/ATV obligations to the owners of the 'Let's Get It On' composition are detailed in one or more contracts between Sony/ATV (or its corporate predecessors or successors/assigns) and the owners of the composition," id. ¶ 342, and that "Sony/ATV was and is obligated under the aforementioned contracts to make filings with the United States Copyright Office to protect, maintain the protection, and enhance the protection afforded to the 'Let's Get It On' composition under the Copyright Act," id. ¶ 345. Although Plaintiff made multiple requests to Sony/ATV and Stone Diamond in April and May 2020 "for a copy of the Administration Agreements," it allegedly has not received a "single piece of paper." Id. ¶ 384.

Plaintiff further alleges, upon information and belief, that "Stone Diamond's legal ownership of 'Let's Get It On' is governed by one or more Songwriting Agreements between Edward Townsend and/or Marvin Gaye, or the successors/assigns of one or both of those persons, on the one hand, and Stone Diamond, on the other hand, or the corporate predecessors or successors/assigns of that company." Id. ¶ 409. In spite of Plaintiff's multiple requests in April and May of 2020 for a copy of these contracts, Defendants purportedly did not provide a "single piece of paper" to Plaintiff. Id. ¶ 410.

D. The Release of "Thinking Out Loud"

Defendant Sheeran released "Thinking Out Loud" in 2014. Id. ¶ 47. In recognition of that song, he was nominated for multiple Grammy Awards. Id. ¶ 24. "Not long after its release, many people," including a 2015 article in Spin Magazine, "began commenting on the similarities between 'Thinking Out Loud' and 'Let's Get It On.'" Id. ¶ 50. Plaintiff alleges, upon information and belief, that "Sheeran himself regularly performs both songs together in a 'mash-up' format, moving from one song to the other and back again." Id. ¶ 321.

E. Parallel Legal Proceedings and 2020 Registration of "Let's Get It On."

On July 11, 2017, Kathryn Townsend Griffin, Helen McDonald, and the Estate of Cherri Gale Townsend—the other successors in interest to Townsend's estate—filed a complaint for copyright infringement in the United States District Court for the Southern District of New York against Sheeran, Atlantic Records, Sony/ATV and Warner Music Group Corporation, alleging that "Thinking Out Loud" infringed the copyright in the musical composition "Let's Get It On." Compl. ¶ 332; see Griffin et al. v. Sheeran et al., No. 17-cv-5221-LLS ("Griffin"). On May 10, 2018, Plaintiff sought to intervene in the case pursuant to Federal Rules of Civil Procedure 24(a) and 24(b). See Griffin, Dkt. 43. That motion was denied for untimeliness on June 11, 2018. See id., Dkt. 48. Griffin is currently set for trial, with Judge Stanton presiding. See id., Dkt. 148.

On June 28, 2018, Plaintiff brought its own suit against Defendants in the Southern District, alleging that "'Thinking Out Loud' copied and exploited, without authorization or credit, the 'Let's Get It On' composition," as registered in the 1973 copyright. See Structured Asset Sales, LLC v. Sheeran et al., No. 18-cv-5839-LLS ("SAS I"). Judge Stanton accepted the case as related to Griffin. Plaintiff amended its complaint on July 16, 2018, October 8, 2018, and May 30, 2019. SAS I, Dkt. 48, 73, 102.

On March 9, 2020, the Court of Appeals for the Ninth Circuit, sitting en banc, issued Skidmore as Trustee for Randy Craig Wolfe Trust v. Led Zeppelin, 952 F.3d 1041 (9th Cir. 2020). Skidmore held that the scope of a copyright in an unpublished work under the 1909 Copyright Act "is defined by the deposit copy." Id. at 1056. In response to that decision and presumably concerned about its effect on the scope of the 1973 copyright for "Let's Get It On," Plaintiff wrote to Sony/ATV and Stone Diamond requesting that they "take action to enhance the scope of copyright protection" for the song. Compl. ¶ 385. On March 19, 2020, and again on April 7, 2020, Plaintiff "specifically requested that Sony/ATV and/or Stone Diamond file a copyright registration . . . using a sound recording of the composition as deposit copy," but "[c]ounsel for Sony/ATV and Stone Diamond refused to do so." Id. ¶ 399. On March 24, 2020, Judge Stanton ruled in Griffin that the 1973 copyright to "Let's Get It On" is limited to what was specifically expressed in the deposit copy, i.e., the sheet music. Id. ¶ 8 n.4.

On April 14, 2020, Plaintiff filed an expedited application with the Copyright Office—allegedly on behalf of, and with the permission of, the Griffin plaintiffs—to register the composition using "the 1973 original hit #1 Billboard single sound recording of the composition, performed by Gaye, . . . as the deposit copy." Compl. ¶ 43; see Parness Decl., Ex. 2. The 2020 copyright, which lists Stone Diamond and Cherritown as the copyright claimants, "[e]xcludes lyrics and music reflected on deposit copy for 1973 registrations," but includes "lyrics and music not reflected on deposit copy for 1973 registrations." Parness Decl., Ex. 2 at 3-4. In correspondence concerning its application, Plaintiff's Chief Executive Officer stated to the Copyright Office that "[a]ny music and lyrics in the studio recording that are not in the original deposit copy were created by Ed Townsend and Marvin Gaye." See Dkt. 63, Declaration of Donald S. Zakarin in Support of Motion to Dismiss Copyright Infringement Claim, Ex. 4 at 12. Accordingly, the registration lists Townsend and Gaye as the authors. Parness Decl., Ex. 2 at 3-4. The accompanying certificate indicates that the first date of the publication of "Let's Get It On" was January 1, 1978. Id. That registration was approved on April 24, 2020, bearing the number PA0002238083. Id.

Plaintiff thereafter sought leave in SAS I to file a fourth amended complaint that would include claims arising from the 2020 registration. See SAS I, Dkt. 156. Defendants opposed that request on the grounds that the purported registration was invalid, and that such an amendment would not relate back as one cannot sue on an unregistered copyright. See id., Dkt. 161. In a memorandum to counsel, Judge Stanton noted that the proposed amendment "raises serious concerns of trial administration and jury confusion" given the differing scopes of the 1973 and 2020 copyrights, and the differing musical components in each. Id., Dkt. 164. Stating that it would be "better to deny permission to file the Fourth Amended Complaint," Judge Stanton nonetheless permitted Plaintiff "to file a formal motion for leave to file it, so the matter may be presented more fully." Id.

In lieu of filing a formal motion in SAS I, Plaintiff initiated this action on June 8, 2020. Although the case was referred to Judge Stanton as possibly related to SAS I, Judge Stanton declined to accept the case as related, and it was assigned to this Court. The Sheeran Defendants filed a motion to dismiss the copyright infringement claim on August 28, 2020. Dkt. 62 ("Sheeran Mot."). The Sony Defendants moved to dismiss the claims for breach of contract on the same day. Dkt. 65 ("Sony Mot.").

II. Allegations in the Complaint

With respect to the principal claim of copyright infringement, Plaintiff contends that "'Thinking Out Loud' copies various elements of 'Let's Get It On,' including but not limited to the melody, rhythms, harmonies, drums, bass line, backing chorus, tempo, syncopation and looping." Compl. ¶ 9. The bulk of the Complaint draws from three expert reports and details the alleged similarities in musical elements, such as chord progression and bass line, between the two compositions. Compl. ¶¶ 54-333. According to Plaintiff, "Defendants' reproduction, distribution, and public performances of . . . 'Thinking Out Loud'" without proper compensation of the copyright owners for the use of the copyrighted elements in "Let's Get It On" willfully infringes its copyrights in violation of the Copyright Act, 17 U.S.C. § 101 et seq. Id. ¶¶ 365-377.

In its second cause of action, Plaintiff contends that the Sony Defendants breached the "Administration Agreements" of which it declares itself a "a third-party beneficiary," id. ¶ 386. Without reference to any specific document, Plaintiff alleges that "the Administration Agreements impose a duty of good faith and fair dealing between and among the parties to that contract and its beneficiaries, including SAS." Id. ¶ 390. Plaintiff claims that the Sony Defendants "breached the Administration Agreements by failing to take steps to secure one or more additional copyright registrations, using sound recordings as deposit copies, to enhance the scope of copyright protection for the 'Let's Get It On' musical composition in the United States and throughout the world." Id. ¶¶ 397, 425.

In its third cause of action, Plaintiff contends that the Sony Defendants breached the "Songwriting Agreements" by intentionally permitting the copyright to be infringed by others. Id.

¶¶ 405-419. Plaintiff again declares itself "a third-party beneficiary of the Songwriting Agreements," without referencing any specific contract. Id. ¶ 412. According to Plaintiff, the Songwriting Agreements "impose a duty of good faith and fair dealing between and among the parties to that contract and its beneficiaries, including SAS." Id. ¶ 417. Citing a number of federal and state cases on New York contract law, Plaintiff contends that the Songwriting Agreements obligated the Sony Defendants "to exercise good faith toward SAS," "to endeavor to make 'Let's Get It On' productive," and "not to use 'Let's Get It On' in a way that would deprive SAS of its right to royalties." Id. ¶¶ 416-420.


To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a complaint must plead "enough facts to state a claim to relief that is plausible on its face." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). "A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

Under Rule 12(b)(6), the question is "not whether [the plaintiff] will ultimately prevail," but "whether his complaint [is] sufficient to cross the federal court's threshold." Skinner v. Switzer, 562 U.S. 521, 529-30 (2011) (internal quotation marks omitted). In answering this question, the Court must "'accept[] all factual allegations as true, but giv[e] no effect to legal conclusions couched as factual allegations.'" Stadnick, 861 F.3d at 35 (quoting Starr v. Sony BMG Music Entm't, 592 F.3d 314, 321 (2d Cir. 2010) (other internal quotation marks omitted)). "A pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do,'" nor does a complaint that "tenders 'naked assertion[s]' devoid of 'further factual enhancement.'" Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555, 557).

The Court may consider any written instrument attached to the complaint as an exhibit, any statements or documents incorporated in it by reference, and any "integral" document on which the plaintiff relied in drafting the complaint. See Nicosia v., Inc., 834 F.3d 220, 230-31 (2d Cir. 2016). Generally, a document is considered integral to the complaint when it constitutes a "'contract or other legal document containing obligations upon which the plaintiff's complaint stands or falls, but which for some reason—usually because the document, read in its entirety, would undermine the legitimacy of the plaintiff's claim—was not attached to the complaint.'" Id. at 231 (quoting Global Network Commc'ns, Inc. v. City of New York, 458 F.3d 150, 157 (2d Cir. 2006)). "However, before materials outside the record may become the basis for a dismissal . . . it must be clear on the record that no dispute exists regarding the authenticity or accuracy of the document" and that "there exist no material disputed issues of fact regarding the relevance of the document." Faulkner, 463 F.3d at 134.

Outcome: Defendants' verdict.

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