"He Didn't Get the Message": Plaintiff's Infringement Claim Over Copyrighted Song Brought Against Spike Lee & Estate of Prince Is Barred By Collateral Estoppel

Topic: Copyright Infringement - Music

"Girl 6" Album Cover - www.princevault.com

Plaintiff James Brandon owns the copyright for “Phone Sex,” a song created in 1993 by “GOMAD,” a musical group managed by Mr. Brandon. In 2015, Mr. Brandon brought an action in the United States District Court for the Southern District of Florida, alleging that the song “Girl 6”—performed by Prince for Spike Lee’s film of the same name—infringed on the copyright for Phone Sex. The Southern District of Florida dismissed that case with prejudice, holding that Mr. Brandon had failed to state a claim that Girl 6 infringed the copyright for Phone Sex. But Mr. Brandon did not get the message. Instead, he filed this action raising the same claims against a different set of defendants. Because the doctrine of collateral estoppel clearly bars Mr. Brandon from relitigating claims that were previously decided against him, this action, like its subject, is fruitless. Defendants’ motion to dismiss is GRANTED.

In 1993, Plaintiff was the manager of the musical group GOMAB.” Amended Complaint (“AC”), Dkt. GOMAB created, wrote, produced, and performed the musical work GOMAB Demo: PT.1 (“GOMAB DEMO”), which included the song “Phone Sex,” in 1993.

In 1994, Plaintiff met Clarence Lee, the uncle of Defendant Shelton Jackson Lee (“Spike Lee”), while promoting GOMAB. During the meeting, Plaintiff played him the GOMAB DEMO, including the song Phone Sex. With Plaintiff present, Clarence Lee called Spike Lee to tell him about GOMAB and Phone Sex. Spike Lee showed an interest in Phone Sex and asked Clarence Lee to forward the song to Defendant Forty Acres and a Mule Musicworks, Inc. (“Forty Acres Music”), care of Lisa Jackson. Ms. Jackson was the soundtrack coordinator for Spike Lee’s upcoming film, Girl 6 (“Film Girl 6”).

Plaintiff left the demo of Phone Sex with Clarence Lee, with the expectation that it would be forwarded to Forty Acres Music. “Upon information and belief, [Phone Sex] was forwarded to Defendant Forty Acres [Music], Lisa Jackson and Spike Lee,” but neither Lisa Jackson nor Spike Lee contacted Plaintiff about the music.

On February 1, 1996, the song Girl 6 (“Girl 6”) was registered with the United States Copyright Office. Defendant Prince Rogers Nelson (“Prince”) and Tommy Elm were listed as its authors. “NPG Publishing” is listed as the copyright claimant. Prince performed the song.

Girl 6 is played in the Film Girl 6, which was released on March 22, 1996 and was copyrighted on March 26, 1996. Defendant Twentieth Century Fox Film Corporation registered the copyright in its name. Girl 6 is also contained in the soundtrack for the Film Girl 6, which was released in March of 1996. Prince was the producer of the soundtrack for the film. Id. The soundtrack was distributed by Warner Bros Records, Inc. (“Warner Brothers”).

Plaintiff alleges Girl 6 “shares substantial and significant similarities” with Phone Sex. He identifies the following similarities:

The two songs share substantially similar hooks. [Phone Sex] contains a two-word, two-pitch hook, containing the lyrics “phone sex,” beginning on the fourth beat and ending on the first beat. The Song Girl 6 contains a two-word, two-pitch hook, with the lyrics “girls six,” beginning on the fourth beat and ending on the first beat. Moreover, the second word on each hook of both songs, (i.e. “sex” and “six”), repeatedly contain identical consonants (“s” and “x”) and are set to similar melodies.

In addition, the trumpet hit arrangement in Song Girl 6 directly copies the trumpet hit arrangement in [Phone Sex]. The arrangement is a single E-flat pitch, which is played throughout various portions of the two songs. The arrangement is played throughout the chorus and the closing section of Song Girl 6. The same is played in the introduction of [Phone Sex].

The two songs also share a similar layout as they both incorporate an echo-sound reverberation effect.

Plaintiff initiated this action on February 28, 2019. Due to a procedural error, he refiled his Complaint on March 1, 2019. The Complaint asserted one count of copyright infringement pursuant to 17 U.S.C. § 501 et seq. The only copyrighted work at issue is Phone Sex and the only allegedly infringing work is Girl 6. The Complaint was amended on May 16, 2019, but the only amendment was an additional allegation regarding venue.

On May 6, 2019, the Lee Defendants filed a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(3) (“Rule 12(b)(3)”), or in the alternative to transfer this case to the Southern District of Florida. Dkt. No. 61. The Court denied the motion to dismiss pursuant to Rule 12(b)(3) or to transfer on August 26, 2019.

On September 12, 2019, Defendants Spike Lee, Forty Acres Music, and Twentieth Century Fox Film Corporation (the “Lee Defendants”) filed a motion to dismiss pursuant to Rule 12(b)(6). Plaintiff filed his opposition on October 3, 2019, Dkt. No. 110 (“Lee Opp.”), and the Lee Defendants filed their reply on October 30, 2019.

On September 10, 2019, Defendants NPG Records, Inc., NPG Music Publishing, LLC, the Estate of Prince Rogers Nelson, and Comerica Bank & Trust, N.A. (the “Prince Defendants”) filed a motion to dismiss for lack of personal jurisdiction pursuant to Federal Rule of Civil Procedure 12(b)(2) (“Rule 12(b)(2)”) and for failure to state a claim pursuant to Rule 12(b)(6). In response to the
Prince Defendants’ motion to dismiss for lack of personal jurisdiction, Plaintiff sought leave to conduct jurisdictional discovery. The Court granted that request. Following jurisdictional discovery, the Prince Defendants filed a second motion to dismiss pursuant to Rules 12(b)(2) and 12(b)(6) on February 27, 2020. Dkt. No. 141. Plaintiff filed his opposition on March 12, 2020 (“Prince Opp.”), Dkt. No. 146, and the Prince Defendants filed their reply on March 19, 2020.

In connection with the Prince Defendants’ motion to dismiss and related briefing, the parties submitted documents produced during jurisdictional discovery. Plaintiff, the Prince Defendants, and non-party Warner Brothers all filed motions to seal certain of this information. The Prince Defendants also submitted a letter in support of Plaintiff’s motion to seal.  On March 20, 2020, the Court invited the parties to submit supplemental briefing on the motions to seal, but no supplemental briefing was submitted.

Both the Lee Defendants and the Prince Defendants’ motions to dismiss assert that the case should be dismissed on the basis of both collateral estoppel and res judicata. The Prince Defendants add that it should be dismissed for failure to adequately allege they had access to Phone Sex or that Girl 6 is substantially similar to Phone Sex. Because the Court finds that collateral estoppel requires this case to be dismissed, it does not reach the other issues raised in Defendants’ motions, including the Prince Defendants’ arguments regarding lack of personal jurisdiction.

Under the doctrine of collateral estoppel, or issue preclusion, Plaintiff cannot relitigate the issue of copyright infringement. The Florida Litigation finally determined that Plaintiff failed to state a claim that Girl 6 infringed on the copyright for Phone Sex, holding that the words “phone sex” were not copyrightable and that the Copyright Registration covered only the lyrics of the song Phone Sex. That decision now binds Plaintiff in this litigation and this case must be dismissed as a result.

JAMES M. BRANDON v. NPG RECORDS, INC., No. 1:19-CV-01923-GHW, 2020 WL 2086008, (S.D.N.Y. Apr. 30, 2020).