Song Author Prevails on Summary Judgment in Rap Music War

Cleveland area radio personality and early rap artist Orrin Lynn Tolliver, Jr. is on a roll in the Southern District of New York. After finding out in 2005 that a song he recorded in 1983 had been sampled in the multi-platinum hit “My Humps” by the Black Eyed Peas (iTunes sample available here), Tolliver sued his former collaborator who licensed the composition without his permission, and won on liability at the summary judgment stage (originally in March, 2009 – here). The district court judge later allowed the defendant to add a new affirmative defense (acquiescence), but then a few months ago proceeded to throw out that defense and order that the case proceed to trial on damages only. A copy of the recent ruling is available here. The next status conference in the case is set for June 2, 2010.

Defenses based on laches, estoppel, acquiescence, and related theories are common in copyright and trademark cases. They arise because intellectual property owners often tolerate infringement until real damage occurs. (Here, for example, Tolliver appears to have been aware that the defendant was improperly licensing the composition at issue to parties other than the Black Eyed Peas five years earlier, in 2000.) Defendants cry foul, claiming that the owner could and should have asserted its claims sooner, but the law imposes a fairly high standard for this defense: the defendant must prove actual prejudice caused by the owner’s delay or implied acquiescence.

In this case, the defendant was doomed by his own shifting responses to Tolliver’s claims. None of these were particularly consistent with the defendant’s position that he had licensed the composition in reliance on his understanding that Tolliver had acquiesced. As the Court wrote, "If Defendant believed that Plaintiff assented to his infringing conduct, he would have no reason to contest ownership of the Composition, claim to be in possession of a written assignment granting him ownership rights to the Composition, deny issuing licenses for exploitation of the Composition, accuse Plaintiff of identify theft . . . , claim to have written another song called ‘I Need a Freak’ separate from the Composition at issue, and so on."

In addition to ending the case on liability (at least pending any appeal), the opinion does not bode well for the defendant in terms of damages. Many of the statutorily available damages are discretionary, and a defendant who is seen as having presented contradictory and baseless defenses usually does not receive the benefit of the doubt. (Here in Boston, the IP community is still discussing the case of the graduate student who was ordered by a jury in federal district court to pay $675,000 for improperly downloading 30 songs – which could have been purchased on iTunes for $29.70.)

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