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Case 1:16-cv-07014-VSB Document 22 Filed 11/29/16 Page 1 of 3


Andrew H. Bart
Tel 212 891-1645
Fax 212 909-0805

November 29, 2016

Honorable Vernon S. Broderick
United States District Judge
Southern District of New York
Thurgood Marshall United States Courthouse
40 Foley Square, Room 415
New York, New York 10007

Cole v. UMG Recordings, Inc., et al., Case No. 16 Civ. 7014 (VSB)

Dear Judge Broderick:

We are counsel for Defendant UMG Recordings, Inc. (UMG)1 in this action. We write
to request a pre-motion conference to address our proposed motion to dismiss the Complaint in
this action, or in the alternative for summary judgment, and separately for leave to file a motion
under Rule 11 for sanctions against Plaintiffs counsel.
The gravamen of Plaintiffs case is that although he is allegedly a co-author of the
musical compositions entitled Natty Dread and War (the Compositions), which were
recorded and made famous by Bob Marley in the 1970s, the Defendants caused the copyright to
those compositions to be registered solely in the name of Defendant Tuff Gong Music (Tuff
Gong). Compl. 8, 12, Ex. C-1. However, it is apparent from the exhibits attached to the
Complaint that Tuff Gong has been listed as the author on the copyright registrations for the
Compositions since 1974 and 1976, respectively. See Compl. Exs. A-1, A-2. Accordingly,
Plaintiffs claim is well outside the Copyright Acts statute of limitations and must be dismissed.
Further, UMG is a record company, not a publishing company, and has never had any ownership
or income interest in these (or any other) compositions. Because the Complaint does not and
cannot adequately allege that UMG has an interest in the Compositions, the claim against UMG
must be dismissed. Alternatively, UMG will provide evidence of its lack of interest in the
Compositions, thus entitling it to summary judgment.

In addition to UMG, the Complaint also names Island Records, Inc. as a Defendant.
However, Island Records, Inc. was merged into UMG more than ten years ago and Island
Records continues as an unincorporated division of UMG, not a separate legal entity. UMG
writes on behalf of itself and its unincorporated division.






Case 1:16-cv-07014-VSB Document 22 Filed 11/29/16 Page 2 of 3


The Claim Is Time-Barred

Claims under the Copyright Act must be brought within three years after the claim
accrues, 17 U.S.C. 507(b), which occurs when a plaintiff knows or has reason to know of the
injury upon which the claim is premised. Merchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996).
Any number of events can trigger the accrual of an ownership claim, including an express
assertion of sole authorship or ownership. Gary Friedrich Enters., LLC v. Marvel Characters,
Inc., 716 F.3d 302, 317 (2d Cir. 2013) (alterations and internal quotation marks omitted)
(quoting Kwan v. Schlein, 634 F.3d 224, 228 (2d Cir. 2011)). As several courts within this
District have held, when a person registers a copyright solely in his own name, that constitutes an
express assertion of sole ownership that starts the limitations period on any competing ownership
claim. Complex Sys., Inc. v. ABN Ambro Bank N.V., 979 F. Supp. 2d 456, 472 (S.D.N.Y. 2013)
(copyright ownership claim time-barred as copyright registration gave plaintiff constructive
notice of defendants claim of ownership); Margo v. Weiss, No. 96 Civ. 3842(MBM), 1998 WL
2558, at *5 (S.D.N.Y. Jan. 5, 1998) (same), affd, 213 F.3d 55 (2d Cir. 2000); see also Tolliver v.
McCants, No. 05 Civ. 10840(JFK), 2009 WL 804114, at *11 (S.D.N.Y. Mar. 25, 2009)
(recognizing rule); Mason v. Jamie Music Pub. Co., 658 F. Supp. 2d 571, 588 (S.D.N.Y. 2009)
(A copyright registration certificate in the Copyright Office provides constructive notice as to
the ownership of the copyright and the facts stated in the registration certificate. (quoting Latin
Am. Music Co. v. Archdiocese of San Juan of the Roman Catholic & Apostolic Church, 499 F.3d
32, 40 (1st Cir.2007))); 17 U.S.C. 205(c) (Recordation of a document in the Copyright Office
gives all persons constructive notice of the facts stated [therein].).
The copyright for Natty Dread was registered under the name of Tuff Gong in 1974, as
was the copyright for War in 1976. Compl. Exs. A-1, A-2. Plaintiff has thus been on
constructive notice of Tuff Gongs claim of ownership in the Compositions for at least four
decades. Accordingly, the untimeliness of Plaintiffs claim is apparent from the face of the
complaint and the exhibits attached thereto. This alone justifies dismissal under Fed. R. Civ. P.
Moreover, to the extent Plaintiff seeks damages resulting from Defendants alleged
infringement, and not simply a declaration of ownership, that claim is time-barred as well.
While Plaintiffs claim is structured as a request for a declaratory judgment, his ad damnum
clause inconsistently requests an accounting and payment based on the alleged infringements.
However, Plaintiffs infringement claim is necessarily dependent on his claim of ownership.
Thus, even if Plaintiff was a registered copyright owner of the Compositions (which is a
prerequisite to filing a copyright infringement action, see 17 U.S.C. 411(a)), Plaintiffs failure
to assert his purported ownership rights in a timely manner bars him from seeking any damages
deriving from those rights. See Kwan, 634 F.3d at 230.

UMG Has No Interest in the Compositions

Plaintiffs claim against UMG is meritless for the further reason that UMG has no
ownership or income interest in the Compositions. Sound recordings and their underlying

Case 1:16-cv-07014-VSB Document 22 Filed 11/29/16 Page 3 of 3

musical compositions are separate works with their own distinct copyrights. Newton v.
Diamond, 204 F. Supp. 2d 1244, 124849 (C.D. Cal. 2002); see 17 U.S.C. 102(2), (7). UMG
is a record label, not a music publisher, and as such it owns copyright interests in sound
recordings, not in the underlying musical compositions.
The entity listed on the copyright registrations as the author of the Compositions is Tuff
Gong, not UMG. See Compl. Exs. A-1, A-2. Plaintiffs only stated basis for bringing a claim
against UMG is his bare allegation that UMG is the successor in interest to any possible
copyright claimant to the subject compositions. Compl. 14; see also Compl. 4 ([A]ll of
[Tuff Gongs] interest as it relates to this matter it [sic] is owned by UMG.). This allegation is
entirely false and baseless. Indeed, this allegation could not have been asserted consistently with
counsels obligations under Fed. R. Civ. P. 11, see infra. In its motion, UMG will introduce
evidence confirming that it has no ownership or income interest in the copyrights to the
Compositions. That evidence will show that there is no genuine issue of fact as to UMGs lack
of interest in the Compositions.

Motion for Sanctions

UMG is entitled to sanctions under Fed. R. Civ. P. 11 against Plaintiffs counsel. Rule 11
empowers the Court to impose sanctions on an attorney who makes legal or factual contentions
without nonfrivolous legal or evidentiary support. See Fed. R. Civ. P. 11(b)(2)(3). Rule 11
explicitly and unambiguously imposes an affirmative duty on each attorney to conduct a
reasonable inquiry into the viability of a pleading before it is signed. Gutierrez v. Fox, 141 F.3d
425, 427 (2d Cir. 1998) (quoting Eastway Constr. Corp. v. City of New York, 762 F.2d 243, 253
(2d Cir. 1985)).
As detailed above, Plaintiffs claim against UMG is legally frivolous, first, because it is
unquestionably time-barred, and second, because Plaintiff plainly has no factual foundation for
his allegation that UMG is the successor in interest to Tuff Gong with respect to the
Compositions. Plaintiffs counsel has failed to conduct a reasonable inquiry into the viability of
his claim against UMG, has nonetheless filed a patently meritless claim against UMG, and has
also refused to withdraw the claim even though we have repeatedly alerted him to its glaring
deficiencies. Accordingly, UMG seeks leave to move for Rule 11 sanctions following the
expiration of the 21-day safe harbor provided in Rule 11(c)(2).
Respectfully submitted,
/s/ Andrew H. Bart
Andrew H. Bart

Warren R. Hamilton (via ECF)