United States District Court, District of Columbia
ROSEMARY M. COLLYER UNITED STATES DISTRICT JUDGE
Nichols, an individual, and Three Eagles Music, said to be a
division of Roger Nichols Music, Inc., sued Club for Growth
Action, alleging that the Club's advertisement violated
copyrights held by Three Eagles Music and Mr. Nichols'
personal rights under trademark law. The Court granted in
part and denied in part Club for Growth Action's Motion
to Dismiss and dismissed Mr. Nichols' trademark claim.
Before completing discovery, Club for Growth Action chose to
move for summary judgment arguing that Three Eagles Music
does not own the copyright at issue. Plaintiffs responded by
requesting leave to file a second amended complaint to
clarify the ownership of the relevant copyright. The motion
for summary judgment will be denied and the motion for leave
to amend will be granted.
Nichols composed both the lyrics and music of the song
Times of Your Life. Times of Your Life was
first recorded in 1975 by Paul Anka. The Complaint alleges
that Three Eagles Music (TEM) is a division of Roger Nichols
Music, Inc. (RNMI) and the owner of the copyrights to both
the musical composition and lyrics of Times of Your
Life. The registration numbers of the two copyrights are
EU529514 and EU599114.
for Growth Action (Club for Growth) is a conservative
political action organization that raises funds and creates
advertisements to promote candidates for public office. In
2015, Club for Growth created two 30-second commercials
focused on challenging former Wisconsin Senator Russ
Feingold's attempt to regain his Senate seat. One
commercial featured Times of Your Life (the Ad). The
Ad altered a majority of the lyrics, but did not alter any of
the musical composition for the portion of the song used in
the commercial. The commercial was available on the Internet
and aired on television in Wisconsin. “At no time has
the Club obtained, or attempted to obtain, a license,
authorization, or other permission from Three Eagles Music to
use or exploit Times of Your Life . . . . Nor did
[Mr.] Nichols consent to allow it to capitalize on his
reputation as a songwriter for the purpose of promoting its
political agenda.” First Am. Compl. (FAC) [Dkt. 9]
first filed suit in federal court in California. Because
Plaintiffs are Oregon residents, Club for Growth resides in
Washington, D.C., and the Ad was aimed at a Wisconsin
political campaign, Club for Growth moved to dismiss for lack
of personal jurisdiction and other pleading failures.
Plaintiffs took a voluntary dismissal of their California
complaint and filed a similar complaint in the District Court
for the District of Columbia. See Compl. [Dkt. 1].
Club for Growth moved to dismiss and Plaintiffs filed an
Amended Complaint on April 29, 2016. See FAC.
for Growth again moved to dismiss for failure to state a
claim and because Plaintiffs' First Amended Complaint
alleged facts demonstrating that the Ad was fair use.
See Mot. to Dismiss [Dkt. 10]. The Court granted the
motion in part, dismissing the trademark claim. See
Mem. Op. [Dkt. 23]; Order [Dkt. 24]. Thereafter, the parties
entered discovery and almost immediately Club for Growth
filed its motion for summary dismissal arguing that the
infringement claim by TEM should be dismissed because TEM
lacks standing to sue. See Mot. for Summ. Dismissal
of Copyright Claim and Entry of Final J. Against Pls. (Mot.)
[Dkt. 33].Club for Growth had researched the
corporate structure of RNMI and TEM and discovered that TEM
is not an incorporated division of RNMI as described by the
Plaintiffs in all previous versions of the Complaint.
See FAC ¶ 7.
responded with a joint opposition and motion for leave to
file a second amended complaint, which would ostensibly
correct the facts about TEM's ability to sue. Pls.'
Opp'n to Def.'s Mot. for Summ. Dismissal of Pls.'
Copyright Claim and Entry of Final J. Against Pls., or in the
Alt., for Leave to Amend the First Am. Compl. (Opp'n)
[Dkt. 35]. On June 27, 2017, before this filing, Plaintiffs
updated the State of Oregon corporation information for RNMI,
indicating that TEM is an assumed business name for RNMI.
See Declaration of Roger Nichols (Nichols Decl.),
Ex. B [Dkt. 35-3]. Club for Growth filed a joint reply and
opposition to the motion to amend. Consol. Reply to Opp'n
to Summ. Dismissal and Opp'n to Cross Mot. to Amend (Club
Reply) [Dkt. 38]; see also Declaration of Lincoln D.
Bandlow, Ex. C, Second Amended Complaint (SAC) [Dkt. 35-2].
Plaintiffs filed a reply in support of the motion to amend.
Pls.' Reply Brief in Supp. of Their Cross-Mot. for Leave
to Amend the First Am. Compl. (Pls.' Reply) [Dkt. 40].
The motions are ripe.
Leave to Amend a Complaint - Fed.R.Civ.P. 15
of the Federal Rules of Civil Procedure governs the filing of
amended pleadings, such as a complaint, after a responsive
pleading has been filed. See Answer [Dkt. 25]. As
relevant here, it specifies that “a party may amend its
pleading only with the opposing party's written consent
or the court's leave. The court should freely give leave
when justice so requires.” Fed.R.Civ.P. 15(a)(2). The
grant or denial of leave lies in the sound discretion of the
district court. See Firestone v. Firestone, 76 F.3d
1205, 1208 (D.C. Cir. 1996). A court may deny leave to amend
with sufficient reason, such as futility of amendment, undue
delay, bad faith, dilatory motive, undue prejudice, or
repeated failure to cure deficiencies by previous amendments.
See Foman v. Davis, 371 U.S. 178, 182 (1962).
Motion for Summary Judgment - Fed.R.Civ.P. 56
Rule 56 of the Federal Rules of Civil Procedure, summary
judgment shall be granted “if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a); accord Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 247 (1986). Moreover, summary
judgment is properly granted against a party who,
“after adequate time for discovery and upon motion, . .
. fails to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden of proof at
trial.” Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986). In ruling on a motion for summary judgment,
the court must draw all justifiable inferences in the
nonmoving party's favor and accept the nonmoving
party's evidence as true. Anderson, 477 U.S. at
255. A nonmoving party, however, must establish more than
“[t]he mere existence of a scintilla of evidence”
in support of its position. Id. at 252. In addition,
the nonmoving party may not rely solely on allegations or
conclusory statements. Greene v. Dalton, 164 F.3d
671, 675 (D.C. Cir. 1999). Rather, the nonmoving party must
present specific facts that would enable a reasonable jury to
find in its favor. Id. If the evidence “is
merely colorable, or is not significantly probative, summary
judgment may be granted.” Anderson, 477 U.S.
at 249-50 (citations omitted). On summary judgment, the
district judge must decide “whether the evidence
presents a sufficient disagreement to require submission to a
jury or whether it is so one-sided that one party must
prevail as a matter of law.” Id. at 251-52.