In a case decided largely on procedural grounds (leave to file amended complaint, subject matter jurisdiction, attorneys’ fees, res judicata), a once well-known blues and soul artist finally failed in his drawn-out attempt to obtain redress for the “looping” of his 1969 song by a 1990’s hip-hop group, when the U.S. Court of Appeals for the Seventh Circuit upheld all of the district court’s rulings against him in both of the cases he filed against the group. By taking too long to get his facts straight and to commit to a viable legal theory, Syl Johnson is now singing the blues again. Johnson v. Cypress Hill, Case Nos. 08-3810, 09-2213, 10-1733 (7th Cir., June 1, 2011) (Evans, J.).
In 1969, Twinight Records released a record of Johnson’s song “Because I’m Black.” Johnson also recorded a later version in 1972. In 1993, the hip-hop group Cypress Hill released an album, “Black Sunday,” containing a track titled “Interlude,” which consisted of 2.5 seconds of Johnson’s song, looped for the entire 77-second track. In 2003 Johnson heard the track and sued Cypress Hill for infringement of the 1972 sound recording, asking for $29 million in damage.
Unfortunately for Johnson, it was revealed during discovery that his pleaded copyright registration did not cover the 1972 recording. This was particularly crucial to his claim because the Copyright Act does not protect sound recordings made before February 15, 1972, and the defendant used the 1969 recording for its album track. In 2008, after the defendant moved for summary judgment, the plaintiff tried to fix his case by asking for leave to amend his complaint to substitute claims for misappropriation under state law and for infringement of his copyright in the song composition (rather than its recording). The district court ruled that this amendment was too late and granted summary judgment to the defendant. The plaintiff tried again by asking the district court to vacate the summary judgment and enter an order dismissing the case for lack of subject-matter jurisdiction (since he never had a copyright in the sound recording that the defendant used). The district court also denied this motion, and then awarded attorneys’ fees and costs to the defendant. Following dismissal of his first case, the plaintiff filed a second case asserting a state law misappropriation claim and a claim for infringement of the composition copyright. The district court dismissed the second case as barred by res judicata.
The plaintiff appealed both cases, arguing that the district court should not have denied his motion for leave to amend in the first case; the court lacked subject-matter jurisdiction over the first case and thus the entry of summary judgment was improper; attorneys’ fees should not have been awarded in the first case; and the second case was not barred by res judicata. The court affirmed all of the appealed rulings of the district court in both cases. In doing so, the court labeled the request for amendment made on the eve of summary judgment as “exactly the sort of switcheroo we have counseled against.” The court then found that the argument that the district court lacked subject-matter jurisdiction because the plaintiff did not hold a proper copyright registration when he sued was foreclosed by the Supreme Court’s holding in Reed Elsevier. The award of attorneys’ fees was affirmed on the basis that the plaintiff had “clear notice that [his] claim was frivolous and objectively unreasonable.” Finally, the court found that because the district court did have subject-matter jurisdiction under Reed Elsevier and the facts underlying the legal theories in both of the cases were “unquestionably identical,” the second case was barred by res judicata.
Practice Note: By failing to conduct a thorough examination of the facts and the applicable law prior to running into court, a plaintiff and his lawyers run the risk of turning what might have been a solid hit of a case into a mash-up of facts and theories that will never even make the charts.