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Case 2:13-cv-06004-JAK-AGR Document 377 Filed 05/01/15 Page 1 of 20 Page ID

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Paul H. Duvall (SBN 73699)


E-Mail: pduvall@kingballow.com
KING & BALLOW
6540 Lusk Blvd., Suite 250
San Diego, CA 92121
(858) 597-6000
Fax: (858) 597-6008
Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and
Nona Marvisa Gaye

Richard S. Busch (TN BPR 014594) (pro hac


vice)
E-Mail: rbusch@kingballow.com
Sara R. Ellis (TN BPR 030760) (pro hac vice)
E-Mail: sellis@kingballow.com
KING & BALLOW
315 Union Street, Suite 1100
Nashville, TN 37201
(615) 259-3456 Fax: (615) 726-5417
Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and Nona
Marvisa Gaye

Mark L. Block (SBN 115457)


E-Mail: mblock@wargofrench.com
WARGO & FRENCH LLP
1888 Century Park East; Suite 1520
Los Angeles, CA 90067
(310) 853-6355 Fax: (310) 853-6333
Attorneys for Defendants and CounterClaimants Frankie Christian Gaye and
Nona Marvisa Gaye

Paul N. Philips (SBN 18792)


E-Mail: pnp@pnplegal.com
The Law Offices of Paul N. Philips, APLC
9255 West Sunset Boulevard, Suite 920
West Hollywood, CA 90069
(323)813-1126 Fax: (323) 854-6902
Attorney for Defendant and Counter-Claimant
Marvin Gaye III

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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PHARRELL WILLIAMS, an
individual; ROBIN THICKE, an
individual; and CLIFFORD HARRIS,
JR., an individual,
Plaintiffs,

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vs.
BRIDGEPORT MUSIC, INC., a
Michigan corporation; FRANKIE
CHRISTIAN GAYE, an individual;
MARVIN GAYE III, an individual;
NONA MARVISA GAYE, an
individual; and DOES 1 through 10,
inclusive,

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Defendants.

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_______________________________

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AND RELATED COUNTERCLAIMS

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Case No. CV13-06004-JAK (AGRx)


Hon. John A. Kronstadt, Ctrm 750
COUNTER-CLAIMANTS JOINT POSTTRIAL MOTION FOR INJUNCTIVE
RELIEF, OR IN THE ALTERNATIVE,
FOR ONGOING ROYALTIES
Motion Hearing:
Date: June 29, 2015
Time: 8:30 am
Ctrm: 750
Action Commenced: August 15, 2013
Trial Date: February 24, 2015

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TABLE OF CONTENTS

2 TABLE OF AUTHORITIES .....................................................................................................................ii


3 NOTICE OF MOTION AND MOTION ................................................................................................... 1
4 INTRODUCTION ..................................................................................................................................... 1
5 ARGUMENT ............................................................................................................................................. 4
6 I. A PERMANENT INJUNCTION IS AUTHORIZED AND WARRANTED. .................................... 4
7 A. The Gayes Will Suffer Irreparable Harm That Cannot Be Readily Compensated With Damages. .... 5
8 B. The Balance of Equities Weighs in Favor of the Gayes ...................................................................... 7
9 C. An Injunction is in the Public Interest ................................................................................................. 8
10 D. The Injunction Should Extend To The Interscope Parties ................................................................... 9
11 II. IMPOUNDMENT OF COPIES OF BLURRED LINES IS NECESSARY. ................................. 11
12 III. ALTERNATIVELY, THE COURT SHOULD ORDER PLAINTIFFS AND COUNTER13

DEFENDANTS TO ACCOUNT AND PAY ONGOING ROYALTIES TO THE GAYES ............ 11

14 IV. CONCLUSION .................................................................................................................................. 14


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TABLE OF AUTHORITIES

1
2 Cases

3 Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 1988) ................................................... 12-13
4 Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240
5

(3rd Cir. 1983) ................................................................................................................. 8

6 Bridgeport Music, Inc. v. Justin Combs Pub., 507 F.3d 470 (6th Cir. 2007) ............passim
7 Cadence Design Systems, Inc. v. Avant! Corp., 125 F.3d 824 (9th Cir. 1997) .................. 7
8 Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600 (1st Cir. 1988)....... 7
9 eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) ............................................. 3, 6
10 eBay, Inc. v. Bidders Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Cal. 2000) ........................ 6
11 EMI April Music, Inc. v. Keshmiri, 2012 WL 5986423 (D. Nev. Nov. 28, 2012) ......... 6, 8
12 Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989 (9th Cir.2011) ................ 4
13 FormFactor, Inc. v. Mr. Prober Tech. Inc., No. 13-CV-03688-JD, 2015 WL 1870236
14

(N.D. Cal. Apr. 23, 2015) .............................................................................................. 10

15 Getty Images (U.S.), Inc. v. Virtual Clinics, No. C13-0626JLR, 2014 WL 1116775
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(W.D. Wash. Mar. 20, 2014) ........................................................................................... 8

17 Grant Heilman Photography, Inc. v. John Wiley & Sons, Inc., 864 F. Supp. 2d 316
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(E.D. Pa. 2012) .............................................................................................................. 13

19 Hewlett-Packard Co. v. Mustek Sys., Inc., No. 99-CV-0351-RHW, 2002 WL


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32344605 (S.D. Cal. Apr. 29, 2002) ............................................................................. 10

21 Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969 (N.D. Cal. 2006) ......................................... 10
22 Liberty Media Holdings, LLC v. Vinigay.com, No. CV-11-280-PHX-LOA, 2011 WL
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7430062 (D. Ariz. Dec. 28, 2011) ................................................................................... 6

24 Lockheed Martin Corp. v. Network Solutions, Inc., No. CV 96-7438 DDP ANX, 1997
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WL 381967 (C.D. Cal. Mar. 19, 1997) ......................................................................... 10

26 MetroGoldwynMayer Studios Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D.


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Cal. 2007) .................................................................................................................. 5, 12

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1 Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) ................... 10
2 Micro Star v. Formgen Inc., 154 F.3d 1107 (9th Cir. 1998) .............................................. 5
3 Oracle USA, Inc. v. Qtrax, Inc., No. C09-3334 SBA BZ, 2011 WL 4853436 (N.D.
4

Cal. Sept. 27, 2011) ....................................................................................................... 11

5 Perfect 10, Inc. v. Google, Inc., 653 F.3d 976 (9th Cir. Cal. 2011) ................................... 4
6 Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) .................................... 12
7 Practice Mgmt. Info. Corp. v. Am. Med. Assn, 121 F.3d 516 (9th Cir. 1997) ................ 12
8 Rovio Entm't Ltd. v. Royal Plush Toys, Inc., No. C 12-5543 SBA, 2012 WL 5936214
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(N.D. Cal. Nov. 27, 2012) ............................................................................................... 7

10 Richard Feiner & Co. v. Turner Entm't, 926 F. Supp 40 (S.D.N.Y.), rev'd in part on
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other grounds, 98 F.3d 33 (2d Cir. 1996) ..................................................................... 13

12 Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) ..................... 5, 11
13 Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distributors Pty. Ltd., 647 F.2d
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200 (D.C. Cir. 1981) ...................................................................................................... 10

15 Taylor Corp. v. Four Seasons Greetings, LLC, 403 F.3d 958 (8th Cir. 2005)................... 8
16 Triad Sys. Corp. v. Se. Exp. Co., 64 F.3d 1330 (9th Cir. 1995) ......................................... 7
17 Universal City Studios, Inc. v. Sony Corp. of America, 659 F.2d 963
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(9th Cir. 1981) ............................................................................................................... 12

19 Wakefield v. Olenicoff, No. SACV 12-2077 AG RNBX, 2015 WL 1460152 (C.D. Cal.
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Mar. 30, 2015) ................................................................................................................. 8

21 Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990)............................................ 3, 4
22 Warner Bros. Entmt Inc. v. WTV Sys., Inc., 824 F. Supp. 2d 1003
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(C.D. Cal. 2011) ...................................................................................................... 5, 6, 8

24 Warner Bros. Home Entmt Inc. v. FilmAndMusicUSA, LLC, No. CV 13-00874 SJO
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JCX, 2013 WL 4478956 (C.D. Cal. Aug. 20, 2013) ........................................... 4, 5, 7, 8

26 White v. Samsung Elecs. Am., Inc., 989 F.2d 1512 (9th Cir. 1993) ................................... 5
27 Woods v. Universal City Studios, 920 F. Supp. 62 (S.D.N.Y. 1996) ............................... 13
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1 Statutes
2 17 U.S.C. 106 ...................................................................................................................5
3 17 U.S.C. 502 ...........................................................................................................1, 2, 4
4 17 U.S.C. 503 .........................................................................................................1, 4, 11
5 Rules
6 Fed. R. Civ. P. 65 ................................................................................................................1
7 Treatises
8 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 14.06 [B] (2007) ....3, 12
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NOTICE OF MOTION AND MOTION

In light of the jurys verdict finding that Blurred Lines is an infringing work, all

3 further exploitation of the work by Plaintiffs and Counter-Defendants constitutes a


4 further violation of the rights of Counter-Claimants Nona Marvisa Gaye, Frankie
5 Christian Gaye, and Marvin Gaye III (hereinafter the Gayes). The Gayes have
6 proposed a stipulation to the Plaintiffs and Counter-Defendants to protect the Gayes
7 rights while allowing continuing exploitation of Blurred Lines.1 As of the date of this
8 submission, the Gaye family has received no response. Accordingly, the Gayes hereby
9 move pursuant to 17 U.S.C. 502 and 503 and Federal Rule of Civil Procedure 65 to
10 immediately and permanently enjoin Plaintiffs and Counter-Defendants, and those in
11 active concert or participation with them, from reproducing, distributing, performing,
12 displaying, and preparing derivative works of the infringing work Blurred Lines, or
13 authorizing any third-party to do the same, and to impound any and all infringing articles
14 containing the composition Blurred Lines, including all copies of the sound recording
15 Blurred Lines, whether in the form of masters, phonorecords, or otherwise, all of
16 which contain the infringing composition. In the alternative, the Gayes request that the
17 Court enter an Order directing the Counter-Defendants to account and pay ongoing
18 royalties to the Gayes in the amount of 50% of all future songwriter and publishing
19 revenues generated by Blurred Lines, in accordance with the jurys verdict, from the date
20 of that verdict and in perpetuity.
21

MEMORANDUM OF POINTS AND AUTHORITIES

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INTRODUCTION
On August 15, 2013 Plaintiffs and Counter-Defendants Robin Thicke, Pharrell

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24 Williams, and Clifford Harris, Jr. (Plaintiffs) filed a Complaint against the Gayes
25 seeking a declaration that Plaintiffs composition and sound recording Blurred Lines
26 does not infringe the Gayes copyright in the composition Got to Give it Up. (Dkt. No.
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See Busch. Decl. Ex A, proposed stipulation dated April 24, 2015.


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1 1). On October 30, 2013, Nona Marvisa Gaye and Frankie Christian Gaye filed a
2 Counterclaim for infringement of Got to Give it Up by Blurred Lines against
3 Plaintiffs and additional Counter-Defendants Star Trak Entertainment, Interscope
4 Records, UMG Recordings, Inc., and Universal Music Distribution (collectively, the
5 Interscope Parties), and More Water From Nazareth Publishing, Inc. (Dkt. No. 14). As
6 part of their request for relief, Nona Marvisa Gaye and Frankie Christian Gaye sought
7 under 17 U.S.C. 502:
8

A permanent injunction requiring the [Plaintiffs and Counter-Defendants]

and their agents, servants, employees, officers, attorneys, successors,

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licensees, partners, and assigns, and all persons acting in concert or

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participation with each or any one of them, to cease directly and indirectly

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infringing, and causing, enabling, facilitating, encouraging, promoting,

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inducing, and/or participating in the infringement of any of Gaye Familys

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rights protected by the Copyright Act;

15 (Dkt. No. 14 at 44).2

On March 10, 2015, after a seven-day trial and nearly two days of deliberations,

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17 an eight-member jury unanimously found Blurred Lines infringed the Gayes


18 copyright in Got to Give it Up, and awarded the Gayes $7,378,647.19 in profits and
19 actual damages against Robin Thicke and the Williams Parties, Mr. Williams and his
20 publishing entity, More Water from Nazareth Publishing, Inc. (Dkt. No. 320 at 2-3).3

Under traditional copyright law, a showing of past infringement and a

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22 substantial likelihood of future infringement justifies issuance of a permanent


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On November 19, 2013, Counter-Claimant Marvin Gaye III filed his Counterclaim and
also sought a permanent injunction against Plaintiffs and Counter-Defendants for the
exploitation of Blurred Lines. (Dkt. No. 36 at 17-18).
3
The jury did not find Clifford Harris, Jr. and the Interscope Parties liable for copyright
infringement. (Dkt. No. 320 at 1:22-28). However, as explained below, it is undisputed
that the Interscope Parties distribute the infringing recording and are accordingly subject
to an injunction.
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1 injunction. Bridgeport Music, Inc. v. Justin Combs Pub., 507 F.3d 470, 492 (6th Cir.
2 2007) (citing Melville B. Nimmer & David Nimmer, Nimmer on Copyright 14.06 [B]
3 (2007). Not only is the issuance of a permanent injunction justified [w]hen a copyright
4 plaintiff has established a threat of continuing infringement, he is entitled to an
5 injunction.

Id. (quoting Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C. Cir.

6 1990)). Even under more recent cases applying the standard articulated in the Supreme
7 Courts decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006), courts
8 routinely award injunctions to successful copyright plaintiffs to halt future infringement
9 and avoid the necessity of recurring lawsuits. See, e.g., Warner Bros. Entmt Inc. v.
10 WTV Sys., Inc., 824 F. Supp. 2d 1003, 1015 (C.D. Cal. 2011). See Part I, infra. In
11 addition, to avoid the risk of future infringement, the Court should order the infringing
12 works impounded. See Part II, infra. In the alternative, it is within the Courts authority
13 to order Plaintiffs/Counter-Defendants to account for and pay ongoing royalties to the
14 Gayes.

The jurys verdict, and the expert testimony upon which the jury relied,

15 establishes that an ongoing royalty of 50% of all future songwriter and publishing
16 revenues generated by Blurred Lines, would be appropriate. See Part III, infra.
17

The Gayes emphasize that they do not seek to permanently prevent the

18 exploitation of Blurred Lines.

Nobody wins if that occurs.

Unfortunately, the

19 Plaintiffs/Counter-Defendants have not responded to the Gayes request that the parties
20 agree to reasonable steps to protect the Gayes rights and interests pending
21 Plaintiffs/Counter-Defendants likely appeal, thus necessitating this motion.

In the

22 absence of injunctive relief, Plaintiffs/Counter-Defendants will continue to infringe the


23 Gayes rights.
24 //
25 //
26 //
27 //
28 //

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ARGUMENT

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I. A

PERMANENT

INJUNCTION

IS

AUTHORIZED

AND

WARRANTED.
The Copyright Act explicitly authorizes a court to grant final injunctions to

5 prevent or restrain future infringement. Any court having jurisdiction of a civil action
6 arising under this title may, subject to the provisions of section 1498 of title 28, grant
7 temporary and final injunctions on such terms as it may deem reasonable to prevent or
8 restrain infringement of a copyright. 17 U.S.C. 502(a). Further, the court is authorized
9 to order the impounding, on such terms as it may deem reasonableof all copies or
10 phonorecords claimed to have been made or used in violation of the exclusive right of
11 the copyright owner. 17 U.S.C. 503(a)(1)(A).
12

Traditionally, these remedies follow as a matter of course from a finding of

13 copyright infringement. Not only is the issuance of a permanent injunction justified


14 [w]hen a copyright plaintiff has established a threat of continuing infringement, he is
15 entitled to an injunction. Bridgeport Music, Inc., 507 F.3d at 492 (quoting Walt Disney
16 Co., 897 F.2d at 567). More recently, the Ninth Circuit has applied the more flexible
17 standard for patent injunctions derived from the Supreme Courts decision in eBay Inc.
18 v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006), to injunctions under the Copyright
19 Act. See Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 994-998 (9th
20 Cir.2011); Perfect 10, Inc. v. Google, Inc., 653 F.3d 976, 979-980 (9th Cir. Cal. 2011).
21 The eBay standard requires a plaintiff to demonstrate (1) that it has suffered an
22 irreparable injury; (2) that remedies available at law, such as monetary damages, are
23 inadequate to compensate for that injury; (3) that, considering the balance of hardships
24 between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the
25 public interest would not be disserved by a permanent injunction. 547 U.S. at 391; see
26 also Warner Bros. Home Entmt Inc. v. FilmAndMusicUSA, LLC, No. CV 13-00874 SJO
27 JCX, 2013 WL 4478956, at *5 (C.D. Cal. Aug. 20, 2013). The more flexible eBay
28 standard is easily met here.

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1
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3

A. The Gayes Will Suffer Irreparable Harm That Cannot Be Readily


Compensated With Damages.
The Gaye family will suffer irreparable harm to their copyright in Got to Give it

4 Up if an injunction is not issued. Under the Copyright Act, the owner of a copyright in
5 a musical composition is entitled to the exclusive use of the composition, including the
6 right to, and the exclusive right to authorize others to, reproduce, distribute, sell,
7 perform, display, and prepare derivative works. 17 U.S.C. 106. The author also has
8 the exclusive right to decide when, where, to whom, and for how much they will
9 authorize transmission of their Copyrighted Works to the public. Warner Bros. Entmt
10 Inc. v. WTV Sys., Inc., 824 F. Supp. 2d 1003, 1012 (C.D. Cal. 2011) (citing Metro
11 GoldwynMayer Studios Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1218 (C.D. Cal.
12 2007)). Likewise, copyright owners have the exclusive right to license their works. See
13 White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1518 (9th Cir. 1993) (balancing the
14 right of fair use of parodies and copyright holders exclusive rights to license derivative
15 works of [their] shows.); see also Micro Star v. Formgen Inc., 154 F.3d 1107, 1113
16 (9th Cir. 1998) (citing Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417,
17 451 (1984) (in discussing that the infringement was for purely financial gain, the
18 Court stated [e]very commercial use of copyrighted material is presumptively an unfair
19 exploitation of the monopoly privilege that belongs to the owner of the copyright.). The
20 continued exploitation by Plaintiffs/Counter-Defendants violates every one of these
21 rights.
22

There is no serious question that infringement is ongoing. Despite the jurys

23 verdict, Blurred Lines continues to be sold on iTunes and Amazon.com. (Attached to


24 Busch Decl. as Exhibits B, C). Further, Plaintiffs/Counter-Defendants have refused to
25 provide any assurance that infringement will cease or even to respond to the Gayes
26 letter proposing interim remedies pending appeal. (See Busch Decl. Ex. A)
27

Damages cannot adequately compensate for this ongoing harm. The damages

28 awarded by the jury were limited to past uses. In order to obtain damages for future and

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1 ongoing infringements, the Gayes would be required to file a series of lawsuits, possibly
2 against an ever-growing and changing group of defendants, at least every three years.4
3 Even if liability were stipulated, each such lawsuit would pose its own challenges of
4 jurisdiction and proof. And the need to file such lawsuits would be constant: the Gayes
5 copyright in Got to Give It Up does not expire until 2072.5 A lifetime (and then some)
6 spent in court chasing down serial infringers is hardly a desirable or adequate remedy.
7 See Liberty Media Holdings, LLC v. Vinigay.com, No. CV-11-280-PHX-LOA, 2011 WL
8 7430062, at *14-*15 (D. Ariz. Dec. 28, 2011), report and recommendation adopted, No.
9 CV-11-280-PHX-SMM, 2012 WL 641579 (D. Ariz. Feb. 28, 2012) (applying eBay
10 factors in copyright infringement case and granting permanent injunction in part because
11 monetary damages would not prevent Defendants from continuing to infringe Plaintiff's
12 copyrighted works through other websites in the future, and will not prevent third-parties
13 using those websites for further infringement of Plaintiff's copyrighted works.); see also
14 EMI Apr. Music, Inc. v. Keshmiri, No. 2:10-CV-00381-KJD, 2012 WL 5986423, at *7
15 (D. Nev. Nov. 28, 2012) (granting injunction in copyright infringement case, reasoning
16 that injunction will help avoid future litigation between the parties[.]).

While courts may no longer presume irreparable harm in copyright cases, recent

17

18 cases recognize that exactly these facts -- ongoing, manifold infringement and the great
19 difficulty of calculating the resulting damages -- constitutes irreparable harm that legal
20 remedies are inadequate to compensate.

Harm resulting from lost profits and lost

21 customer goodwill is irreparable because it is neither easily calculable, nor easily


22 compensable and is therefore an appropriate basis for injunctive relief. Warner Bros.
23 Entmt Inc., 824 F. Supp. 2d at 1013 (quoting eBay, Inc. v. Bidders Edge, Inc., 100 F.
24 Supp. 2d 1058, 1066 (N.D. Cal. 2000)); see also Vinigay.com, 2011 WL 7430062, at *14
25 ([T]he evidence demonstrates irreparable harm to Plaintiff and supports the conclusion
26 that an award of damages would be inadequate because the harm caused to Plaintiffs
27
28

4
5

The statute of limitations under the Copyright Act is three years. 17 U.S.C. 507(b).
See 17 U.S.C. 304; see also U.S. Copyright Office Circular 15A.
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1 reputation, goodwill, and brand is difficult, if not impossible, to quantify.); Rovio


2 Entm't Ltd. v. Royal Plush Toys, Inc., No. C 12-5543 SBA, 2012 WL 5936214, at *12
3 (N.D. Cal. Nov. 27, 2012) (granting motion for preliminary injunction in copyright case,
4 reasoning that Plaintiff will suffer irreparable harm because Defendants will continue to
5 sell substantially similar plush toys[.]).

Irreparable injury occurs with each sale of

6 Blurred Lines that does not acknowledge Marvin Gaye as a co-writer and that is not
7 accounted to the Gayes for the use of Got to Give it Up; the Gaye family cannot be
8 compensated for that injury by law. Accordingly, the factors of irreparable injury and
9 lack of available remedies at law support granting a permanent injunction in favor of the
10 Gayes.
11
12

B. The Balance of Equities Weighs in Favor of the Gayes


The Gayes are the victims of copyright infringement, and the Plaintiffs/Counter-

13 Defendants are infringers. An injunction would simply require Plaintiffs and Counter14 Defendants to comply with the Copyright Act; it would not cause them legally
15 cognizable harm. Warner Bros. Home Entmt Inc., 2013 WL 4478956, at *5. Plaintiffs
16 and Counter-Defendants cannot complain of the harm that will befall [them] when
17 properly forced to desist from its infringing activities. Triad Sys. Corp. v. Se. Exp. Co.,
18 64 F.3d 1330, 1338 (9th Cir. 1995). Where the only hardship that the defendant will
19 suffer is lost profits from an activity which has been shown likely to be infringing, such
20 an argument in defense merits little equitable consideration . . . . Id. (quoting
21 Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 612 (1st Cir.
22 1988)); see also Cadence Design Systems, Inc. v. Avant! Corp., 125 F.3d 824, 830 (9th
23 Cir. 1997). Plaintiffs and Counter-Defendants cannot assert any harm other than having
24 to forego profiting from their infringing activities.
25

Further, the Gaye family ha[s] every incentive to negotiate an agreement with

26 [Plaintiffs and Counter-Defendants] to permit them to distribute the infringing work, and
27 there is no reason to believe that the parties will not bargain around the injunction.
28 Bridgeport Music, Inc., 507 F.3d at 493. In fact, in copyright infringement actions, the

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1 denial of a request for injunctive relief could otherwise amount to a forced license to
2 use the creative work of another. Id. (quoting Taylor Corp. v. Four Seasons Greetings,
3 LLC, 403 F.3d 958, 967-68 (8th Cir. 2005) (upholding an immediate injunction on sales
4 of an infringing musical work pre-appeal).
5

Conversely, the harm to the Gaye family in the absence of an injunction is

6 palpable. As discussed, the Gayes would be forced to relitigate the infringement, at least
7 every three years, to collect the revenue and profits earned by Plaintiffs and Counter8 Defendants post-verdict for their continued infringement of Got to Give it Up through
9 their ongoing exploitation of Blurred Lines.
10
11

C. An Injunction is in the Public Interest


An injunction against the further exploitation of Blurred Lines does not do any

12 disservice to the public interest. [I]t is virtually axiomatic that the public interest can
13 only be served by upholding copyright protections and correspondingly, preventing the
14 misappropriation of skills, creative energies, and resources which are invested in the
15 protected work. Warner Bros. Entmt Inc., 824 F. Supp. 2d at 1015 (quoting Apple
16 Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1255 (3rd Cir. 1983)). A
17 permanent injunction would serve the public interest by protecting the holders of valid
18 copyrights, rather than allowing Defendants to continue selling inferior and infringing
19 copies of Plaintiffs copyrighted material to the public. Warner Bros. Home Entmt
20 Inc., 2013 WL 4478956, at *5; see also EMI April Music, Inc. v. Keshmiri, 2012 WL
21 5986423, at *7 (D. Nev. Nov. 28, 2012) (granting injunction in copyright case because
22 an injunction is in the public interest because it helps uphold copyright law.);
23 Wakefield v. Olenicoff, No. SACV 12-2077 AG RNBX, 2015 WL 1460152, at *10 (C.D.
24 Cal. Mar. 30, 2015) (granting permanent injunction in copyright case because removing
25 infringing works from public places will serve a public interest); Getty Images (U.S.),
26 Inc. v. Virtual Clinics, No. C13-0626JLR, 2014 WL 1116775, at *7 (W.D. Wash. Mar.
27 20, 2014) (granting injunction in copyright case where public interest favors protecting
28 Gettys copyrights).

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Any argument that the public would be denied the opportunity to hear or purchase

2 Blurred Lines if an injunction is issued should also fail. Such a concern is not unique
3 to this case; an injunction is the standard remedy when past infringement has been
4 proven and future infringement is likely. Bridgeport Music, Inc., 507 F.3d at 493. Thus,
5 this factor must also be weighed in favor of granting the injunction requested by the
6 Gayes.

D. The Injunction Should Extend To The Interscope Parties

Plaintiffs/Counter-Defendants counsel has publicly stated that the Gaye family

9 should not be able to obtain an injunction because the jury did not find infringement by
10 the Interscope Parties. Counsel is wrong. It is undisputed that the Interscope Parties
11 reproduce, sell, license, and distribute Blurred Lines; the parties have so stipulated and
12 the stipulation was admitted into evidence. (See Dkt. No. 303; Trial Tr., March 5, 2015
13 at 47:16-49:16, attached to Busch Decl. as Exhibit D). A party that reproduces, sells,
14 licenses and distributes an infringing work is liable for infringement. During the trial, on
15 March 4, 2015, the Court specifically asked Plaintiffs counsel if it was disputed that
16 Universal distributed the recording of Blurred Lines, Plaintiffs counsel responded
17 with No, I dont think so. (See Trial Tr., Mar. 4, 2015 at 164:16-18, attached to Busch
18 Decl. as Exhibit E). The Court continued, [I]f the jury finds theres infringement and if
19 Universal distributed the recording, then according to what I heard Mr. Miller say, they
20 would be liable.6 (See id. at 164:24-165:2). After the parties further explained their
21 positions, the Court stated, [I]f you establish infringement and its undisputed that a
22 Universal entity or entities distributed the recording, then there would be liability. (See
23

It is undisputed that the sound recording of Blurred Lines necessarily contains the

24 musical composition Blurred Lines, and thus Got to Give it Up, and that,
25 accordingly, the Interscope Parties exploitation of the sound recording of Blurred

Lines also constitutes exploitation of the musical composition. This is further shown by

26 the fact that for each sale of Blurred Lines, the Interscope Parties have undisputedly
27 paid the writers/publishers of Blurred Lines a mechanical [publishing] royalty. Those

mechanical royalties totaled more than $11,516,445.00 at the time of trial. (See Trial Tr.,

28 March 3, 2015, at 43:9-47:19, attached to Busch Decl. as Exhibit F).

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1 id. at 165:6-8). The Court went on to state, If Star Trak distributed, then Star Trak
2 would be directly liable. (See id. at 166:21-22).

That is exactly the situation that occurred. The Gayes established infringement; it

4 is undisputed that a Universal entity or entities distributed the recording; accordingly


5 there is liability. This conclusion is consistent with well-established law. See Lockheed
6 Martin Corp. v. Network Solutions, Inc., No. CV 96-7438 DDP ANX, 1997 WL 381967,
7 at *3 (C.D. Cal. Mar. 19, 1997) (citing Stabilisierungsfonds Fur Wein v. Kaiser Stuhl
8 Wine Distributors Pty. Ltd., 647 F.2d 200, 207 (D.C. Cir. 1981)) (Courts have long held
9 that in patent, trademark, literary property, and copyright infringement cases, any
10 member of the distribution chain can be sued as an alleged joint tortfeasor.) (emphasis
11 added).7

Accordingly, the Court should not hesitate to extend the injunction to the

12

13 Interscope parties, based on those parties own legal liability for copyright infringement.
14 Moreover, even if the Interscope Parties were not themselves liable, the Courts
15 injunction authority extends to all of those acting in concert with the infringers. See
16 FormFactor, Inc. v. Mr. Prober Tech. Inc., No. 13-CV-03688-JD, 2015 WL 1870236, at
17 *3 (N.D. Cal. Apr. 23, 2015); Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 999-1000
18 (N.D. Cal. 2006); Hewlett-Packard Co. v. Mustek Sys., Inc., No. 99-CV-0351-RHW,
19 2002 WL 32344605, at *1 (S.D. Cal. Apr. 29, 2002). As the distributors of Thickes and
20 the Williams Parties infringing recording, the Interscope Parties act in concert with
21 them. Id.
22
23
24

Even if the Interscope Parties were not directly liable, in light of the jurys verdict,
25 their continued acts of exploitation would at minimum constitute willful vicarious and
contributory infringement. See Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545
26
U.S. 913, 930 (2005) (One infringes contributorily by intentionally inducing or
27 encouraging direct infringement . . . and infringes vicariously by profiting from direct
infringement while declining to exercise a right to stop or limit it).
28

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II. IMPOUNDMENT

NECESSARY.

OF

COPIES

OF

BLURRED

LINES

IS

Upon a finding of copyright infringement, the Court may order the impounding,

4 on such terms as it may deem reasonableof all copies or phonorecords claimed to have
5 been made or used in violation of the exclusive right of the copyright owner. 17 U.S.C.
6 503(a)(1)(A); see also Sony Corp. of Am., 464 U.S. at 434. Impoundment may also be
7 ordered when it is necessary to prevent violation of the Copyright Act. See Oracle USA,
8 Inc. v. Qtrax, Inc., No. C09-3334 SBA BZ, 2011 WL 4853436, at *2 (N.D. Cal. Sept.
9 27, 2011) report and recommendation adopted, No. C 09-3334 SBA BZ, 2011 WL
10 4853383 (N.D. Cal. Oct. 13, 2011).
11

In a similar music copyright infringement case, the Sixth Circuit found that the

12 district court did not err in ordering the impoundment of articles containing the
13 infringing work. After a finding of infringement, the district court immediately ordered
14 the defendants to impound all copies of the infringing song and album. Bridgeport
15 Music, Inc., 507 F.3d at 492. The appellate court upheld the district courts ruling
16 applying the factors for injunctive relief. Accordingly, based on the arguments
17 supporting injunctive relief set forth above, this Court should also order the
18 impoundment of any and all infringing articles containing the composition or sound
19 recording Blurred Lines.
20

III. ALTERNATIVELY, THE COURT SHOULD ORDER PLAINTIFFS

21

AND

22

ONGOING ROYALTIES TO THE GAYES

23

COUNTER-DEFENDANTS

TO

ACCOUNT

AND

PAY

In the alternative, if the Court does not enter the injunctive relief requested here

24 to which the Gaye family is entitled for the reasons stated above the Court should
25 instead order Plaintiffs and Counter-Defendants to account and pay ongoing royalties to
26 the Gaye family in the amount of 50% of all future songwriter and publishing revenues
27 generated by Blurred Lines, in accordance with the jurys verdict, from the date of that
28 verdict and in perpetuity thereafter. As set forth below, such an ongoing royalty is an

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1 appropriate alternative to injunctive relief. Accordingly, the Gaye family requests an


2 ongoing royalty payment by Plaintiffs and Counter-Defendants if the Court is not
3 inclined to grant the requested injunctive relief.

On numerous occasions, the Ninth Circuit has recognized that courts may award

5 an ongoing royalty payment to a victorious copyright owner as a future remedy for


6 continuing exploitation of an infringing work where the court finds that a permanent
7 injunction prohibiting such exploitation is not appropriate. See, e.g., Abend v. MCA, Inc.,
8 863 F.2d 1465, 1479 ([C]ourts might . . . award damages or a continuing royalty instead
9 of an injunction in such special circumstances.) (quoting Melville B. Nimmer & David
10 Nimmer, Nimmer on Copyright 14.06 [B] (1988)); Universal City Studios, Inc. v. Sony
11 Corp. of America, 659 F.2d 963, 976 (9th Cir. 1981) (finding Professor Nimmers
12 suggestion of a continuing royalty would constitute an acceptable resolution for
13 infringement), revd on other grounds, 464 U.S. 417, 104 S. Ct. 774, 78 L. Ed. 2d 574
14 (1984) (see Blackmun, J., dissenting, and agreeing with the Ninth Circuit that an award
15 of continuing royalties . . . may well be an appropriate means of balancing the equities
16 in this case.); see also Practice Mgmt. Info. Corp. v. Am. Med. Assn, 121 F.3d 516, 519
17 (9th Cir. 1997); Metro-Goldwyn-Mayer, 518 F. Supp. 2d at 1220-1221 (recognizing the
18 availability of an ongoing royalty award under Abend, but granting permanent injunction
19 instead); Nimmer at 14.06[D] (2014) ([C]ourts may decline to issue a permanent
20 injunction and instead mandate an ongoing royalty payment.).8 In Abend, for instance,
21 the Ninth Circuit found infringement and remanded to the district court to determine
22
23

The United States Supreme Court also recently recognized the availability of an

24 ongoing royalty as a remedy for copyright infringement. Petrella v. Metro-Goldwyn25 Mayer, Inc., 134 S. Ct. 1962, 1979 (2014). In discussing the considerations a court

should review when deciding whether to adjust[] injunctive relief or profits as a

26 remedy for infringement, the Supreme Court in Petrella cited with approval a statement
27 by counsel during oral argument that in fashioning equitable remedies a court could

allow the infringing party to continue using the infringed work as a derivative work

28 upon payment of a reasonable royalty to the copyright owner. Id.

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1 damages, with an instruction to consider alternatives to an injunction, including a


2 continuing royalty.9 Abend, 863 F.2d at 1479.

Here, as described in detail above, Plaintiffs and Counter-Defendants have

4 continued to distribute copies of and otherwise exploit the infringing work Blurred
5 Lines. If the Court determines a permanent injunction is not the appropriate remedy for
6 this continued infringement of the Gayes rights under the Copyright Act, then pursuant
7 to Abend and other Ninth Circuit precedent, the Gayes must be compensated in the form
8 of an ongoing royalty payment for the continued distribution and exploitation of
9 Blurred Lines. The Gayes submit that such ongoing royalty payment should be
10 consistent with the jurys award for past infringement. At trial, Nancie Stern testified
11 that the value of the use of Got To Give It Up in Blurred Lines would have been
12 pegged by her to be 50% of the composition if it had been presented to her for a
13 potential license prior to release of Blurred Lines. (See Busch Decl. Ex. F at 27:18-22,
14 28:16-22).

The stipulation at trial was that the publishing revenue received by the

15 writers of Blurred Lines was approximately $8 million. (Id. at 43:9-47:19).


16 Accordingly, pursuant to Abend, the Gayes request that the Court order Plaintiffs and
17 Counter-Defendants to account and pay ongoing royalties to the Gayes in the amount of
18 50% of all future songwriter and publishing revenues generated by Blurred Lines, from
19 the date of the verdict and in perpetuity thereafter.
20
9

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27
28

Courts in other jurisdictions have also relied on Abend in finding the availability of an
ongoing royalty. See Richard Feiner & Co. v. Turner Entm't, 926 F. Supp 40, 43-44
(S.D.N.Y.), rev'd in part on other grounds, 98 F.3d 33 (2d Cir. 1996) (citing Abend and
stating that where special circumstances exist, such as where an injunction would work
great public injury, an alternative remedy like a continuing royalty may be
warranted); Woods v. Universal City Studios, 920 F. Supp. 62, 65 (S.D.N.Y. 1996)
(citing Abend and stating that Universal has not demonstrated that this is a case of
special circumstances justifying an award of damages or a continuing royalty instead
of an injunction); Grant Heilman Photography, Inc. v. John Wiley & Sons, Inc., 864 F.
Supp. 2d 316, 325 (E.D. Pa. 2012) (citing Abend and acknowledging that [m]oney
damages for infringement, rather than injunctive relief, are appropriate where they are
capable of calculation by the court).
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1
2

IV. CONCLUSION
Based on the foregoing, the Gayes respectfully request this Court immediately and

3 permanently enjoin Plaintiffs/Counter-Defendants, and all acting in concert with them,


4 from reproducing, distributing, performing, displaying, and preparing derivative works of
5 the infringing work Blurred Lines, or authorizing any third-party to do the same, and to
6 impound any and all infringing articles containing the composition Blurred Lines,
7 including all copies of the sound recording Blurred Lines. In the alternative, the Gayes
8 respectfully request that this Court order Plaintiffs and Counter-Defendants to account
9 and pay ongoing royalties to the Gayes in the amount of 50% of all future publishing
10 revenues generated by Blurred Lines, in accordance with the jurys verdict, from the date
11 of that verdict and in perpetuity thereafter.
12
13 Dated: May 1, 2015
14

Respectfully submitted,
KING & BALLOW

15

18

By: /s/ Richard S. Busch


RICHARD S. BUSCH
PAUL H. DUVALL
SARA R. ELLIS

19

WARGO & FRENCH, LLP

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17

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22

By: /s/ Mark L. Block


MARK L. BLOCK
ARNOLD & PORTER LLP

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BY: /S/ DANIEL B. ASIMOW


MARTIN R. GLICK
DANIEL B. ASIMOW

26
27

Attorneys for Defendants and Counter-Claimants


Nona and Frankie Gaye

28

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THE LAW OFFICES OF PAUL N. PHILIPS,


APLC

2
3

By: /s/ Paul N. Philips


PAUL N. PHILIPS

4
5

Attorney for Defendant and Counter-Claimant


Marvin Gaye III

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