JOHNSON v. CYPRESS HILL (June 1, 2011)
In 1993, hip-hop group Cypress Hill released its "Black Sunday" album. One of its tracks includes an excerpt of a song written years earlier by Syl Johnson, an African-American blues and soul singer. The history of the song -- "Is It Because I'm Black" -- is as follows: a) Johnson wrote the song in 1968, b) Twinight Records released a recorded version in 1969, c) Johnson recorded the song in 1972 but never released it in the United States, d) Johnson received a copyright registration in 1997 for a sound recording compilation that he thought included the song but did not, and e) a copyright was registered in 2003 on the words and music. Johnson filed suit against Cypress Hill in 2003, alleging copyright infringement based on the 1997 sound recording compilation copyright. In 2006, the owner of Twinight Records filed a declaration that the 1997 copyright did not include the song. In 2007, a Cypress Hill member testified that he used the 1969 version. Cypress Hill moved for summary judgment on the grounds that pre-1969 sound recordings are not protected under the Copyright Act and that the 1997 copyright did not include the song. Johnson moved to amend his complaint, dropping his original claims and substituting claims for common-law misappropriation and infringement of the 2003 composition copyright. Judge Norgle (N.D. Ill.) denied the motion to amend and granted summary judgment to Cypress Hill. The court also awarded attorneys' fees and costs on the ground that the complaint was baseless. Shortly thereafter, Johnson reasserted his misappropriation claim in a new case in state court (Johnson II). Cypress Hill removed the case to federal court and moved to dismiss on res judicata grounds. The court dismissed. Johnson appeals both orders.
In their opinion, Judges Manion, Evans, and Hamilton affirmed. The Court first concluded that the district court did not abuse its discretion in denying the motion to amend. Johnson knew that his claims were deficient for months, if not years, before he sought to amend his complaint. The case was four years old, discovery was long closed, and a summary judgment motion was on file. Allowing such a radical change of direction at that stage in the case would have been prejudicial to Cypress Hill. With respect to the fee award, the Court concluded that Johnson could not overcome the strong Copyright Act presumption to award fees to a prevailing party. Finally, the court affirmed the dismissal of Johnson II on res judicata grounds. Although the latter case involved a different legal theory, the facts in both cases are identical. That is enough to satisfy the identity of cause of action requirement.