Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`JAMES SAINT-AMOUR and ALENA IVLEVA
`a/k/a JERRRA BLUES, d/b/a Satorii, on behalf
`of themselves and all others similarly situated,
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`Plaintiffs,
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`-against-
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` 16-cv-4464 (PKC)
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` OPINION AND
`ORDER
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`THE RICHMOND ORGANIZATION, INC. and
`LUDLOW MUSIC, INC.,
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`Defendants.
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`CASTEL, U.S.D.J.
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`This action challenges defendants’ interest under the Copyright Act in the iconic
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`American song This Land is Your Land (the “Song”). The late Judge Deborah A. Batts
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`concluded that all of plaintiffs’ state law claims relating to the Song were preempted by the
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`Copyright Act. (Mem. & Order of Mar. 27, 2019 (Doc 28).). Judge Batts otherwise denied
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`defendants’ motion to dismiss. (Id.)
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`Based upon events occurring after Judge Batts’s March 27 decision, defendants
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`now move to dismiss the complaint asserting that there is no longer a live case or controversy
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`and hence that the Court lacks subject matter jurisdiction. Defendants rely principally on a
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`broadly-worded covenant not to sue plaintiffs, the refund of a compulsory mechanical licensing
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`fee ($45.50), and the Supreme Court’s decision in Already, LLC v. Nike, Inc., 568 U.S. 85
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`(2013). Saint-Amour and Ivleva oppose the motion and seek to substitute an unnamed person or
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`persons as plaintiffs.
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`For reasons that will be explained, the defendants’ motion will be granted and the
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`plaintiffs’ motion denied.
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 2 of 7
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`DISCUSSION
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`A. Plaintiffs’ Surviving Claims
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`Plaintiffs’ complaint asserts that defendants do not own valid copyrights to the
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`Song, which, in their view, is in the public domain. (Compl. ¶ 7.) They allege that Woody
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`Guthrie wrote a version of the lyrics in 1940 and put it to the melody of a pre-existing
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`composition. (Id. ¶¶ 20-22.) They claim that Guthrie published the work in a songbook in 1945
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`that bore the legend “Copyright 1945 W. Guthrie” but which was never registered with the
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`Copyright Office. (Id. ¶¶ 26-27.) They claim that any copyright that may have once existed
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`expired on December 31, 1973. (Id. ¶¶ 28-29.) Plaintiffs also present an alternative theory in
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`which the copyright was divested in 1951. (Id. ¶¶ 35, 83.) They assert that a 1956 copyright
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`registration is invalid because Guthrie claimed to author the Song’s music but, they allege, he did
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`not. (Id. ¶ 36.) They make additional claims of invalidity about other applications for
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`registration in 1970 and 1972 and a renewal in 2000. (Id. ¶¶ 46-55.)
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`Plaintiffs also seek the “return of the unlawful licensing fees collected by
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`Defendants.” (Compl. ¶ 7.) Plaintiffs allege that they complied with the requirements of the
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`Copyright Act to obtain a compulsory license to make and distribute a musical work by “digital
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`phonorecord” delivery. 17 U.S.C. § 115. Pursuant to the requirements of the statute, plaintiffs
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`paid defendants $45.50 for a license to produce and distribute 500 copies of the Song (id. ¶ 58)
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`and plaintiffs recorded and made it available for sale. (Id. ¶ 59.) The relief plaintiffs seek
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`includes “restitution . . . of all fees paid to Defendants, directly or indirectly through their agents,
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`to use the Song.” (Id. ¶ 93(b).)
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`Plaintiffs state that they wish to distribute a recording with the same lyrics and a
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`different melody to the Song, and that they desire to produce a music video of the Song.
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 3 of 7
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`However, they fear enforcement of the defendants’ purported copyrights. (Id. ¶¶ 61-62.)
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`Among other relief, plaintiffs seek a declaratory judgment that defendants have no rights to the
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`Song enforceable under the Copyright Act.
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`B. Defendants’ Grant of a Covenant Not to Sue and Refund
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`Since Judge Batts’s March 27 Memorandum & Order, defendants, joined by
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`Woody Guthrie Publications, Inc. (“WGP” ), delivered to plaintiffs a covenant not to sue dated
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`April 23, 2019. (Doc 39, Ex. A.) The covenant recites that they did so “in the interest of
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`avoiding protracted and expensive motion practice and a trial . . . .” (Id.)
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`Defendants and WGP have “unconditionally and irrevocably covenant[ed] to
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`refrain from making any claim or demand, or from commencing, causing, or permitting to be
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`prosecuted any action in law or equity . . .against . . .[the plaintiffs] for infringement of any
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`statutory or common law copyright in the Song. . . .” (Id.) The covenant is written in sweeping
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`terms and is granted by defendants and WGP “on behalf of (i) themselves, (ii) any related or
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`affiliated entity, licensee, or assign, and any person or entity claiming to be in privity of contract
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`with Owners, and (iii) any predecessor, successor, director, officer, employee, agent, distributor,
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`attorney, or representative of any of them. . . . .” (Id.) It extends to plaintiffs and “[a]ny
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`predecessor, successor, director, officer, employee, agent, distributor, attorney, partner, member,
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`shareholder or representative of Plaintiffs, and any agent, vendee, licensee, assign, independent
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`contract manufacturer, or person or entity claiming to be in privity of contract with Plaintiffs, or
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`an assign of any of them.” (Id.) The covenant covers any of the plaintiffs’ “past, current, or
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`future conduct in connection with the use, incorporation, distribution and performance of any
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`audio recording or audiovisual work of which any of the Plaintiffs is an author or co-author, and
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`related soundtracks to such audiovisual works.” (Id.)
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 4 of 7
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`The covenant not to sue was executed by representatives of the defendants and
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`Nora Guthrie on behalf of WPG, who together with defendants assert 100% ownership of the
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`Song. (Doc 39, Ex. A.) In addition to the license, defendants have tendered a check to plaintiffs
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`for the full amount of the “compulsory mechanical license fee,” i.e., $45.50. (Doc 39, Ex. B.)
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`Defendants assert that there is no longer a live case or controversy and that the
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`Court lacks subject matter jurisdiction in view of the covenant not to sue and payment to
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`plaintiffs.
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`C. Application of Mootness Doctrine to Plaintiffs’ Copyright Claims
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`In Already, the Supreme Court answered the question “whether a covenant not to
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`enforce a trademark against a competitor’s existing products and any future ‘colorable
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`imitations’ moots the competitor’s action to have the trademark declared invalid” in the
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`affirmative. 568 U.S. at 88. Judge Sullivan, then of this Court, had found that a covenant not to
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`sue issued four months after the defendant had counterclaimed for a declaration of invalidity
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`rendered the claim moot and dismissed the action. Nike, Inc. v. Already, LLC, No. 09 Civ. 6366
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`(RJS), 2011 WL 310321, at *1-2 (S.D.N.Y. Jan. 20, 2011). The Second Circuit affirmed. Nike,
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`Inc. v. Already, LLC, 663 F.3d 89 (2d Cir. 2011). The Supreme Court, concluding that Nike had
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`met its burden “to show that it ‘could not reasonably be expected’ to resume its enforcement
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`efforts against [the counterclaimant],” affirmed the dismissal of the case as moot. Already, 568
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`U.S. at 92 (quoting Friends of the Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167,
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`190 (2000)); id. at 92-95, 102.1
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`1 While Already was a trademark case, the Court has examined the covenant not to sue in that case. The covenant in
`Already was similar in scope to the covenant in this case, except that the Already covenant reached state law claims
`and the covenant in this case does not. Nike, Inc., 2011 WL 310321, at *1-*2. Here, the state law claims were
`previously dismissed as preempted.
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 5 of 7
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`After Judge Sullivan’s and the Circuit’s rulings in Already but before the
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`Supreme Court’s affirmance, Judge Alison Nathan found that a broadly-worded covenant,
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`executed two months after the institution of an action, extinguished any live case or controversy
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`for copyright infringement. Velvet Underground v. Andy Warhol Found. for the Visual Arts,
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`Inc., 890 F. Supp. 2d 398, 404 (S.D.N.Y. 2012). Judge Nathan noted that the mere existence of a
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`claim to a copyrighted design did not render the plaintiff’s claim of invalidity to be a live
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`controversy. Id. at 405-406.
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`Having reviewed the covenant not to sue, the Court concludes that it is extremely
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`broad, covers past, present and future conduct by plaintiffs, their predecessors, successors,
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`assigns and a host of others. Defendants have met their burden of showing that they could not
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`reasonably be expected to resume their efforts to enforce against plaintiffs any right they may
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`have under the copyright laws relating to the Song.
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`In opposition to the motion, plaintiffs assert that the covenant not to sue does not
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`extinguish its state law claims. In that respect they are correct, except that the state law claims
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`were dismissed with prejudice in Judge Batts’s March 27 Memorandum & Order as preempted
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`by the Copyright Act. (Doc 28 at 21-24.) Upon entry of final judgment, plaintiffs’ right to
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`appeal the state law claims will be fully preserved.
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`Plaintiffs also argue that the covenant does not extinguish any claim they may
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`have for attorneys’ fees under the Copyright Act. 17 U.S.C. § 505 (“[T]he Court may also
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`award a reasonable attorney's fee to the prevailing party as part of the costs.”) But an award of
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`costs to a prevailing party is not part of the underlying claim; it is additional relief available to
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`one who prevails on that claim. See Lewis v. Continental Bank Corp., 494 U.S. 472, 480 (1990)
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`(“This interest in attorney’s fees is, of course, insufficient to create an Article III case or
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 6 of 7
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`controversy where none exists on the merits of the underlying claim. . . . .”). The possibility that
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`plaintiffs may have a right to claim attorneys’ fees does not save plaintiffs’ underlying copyright
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`claims from dismissal.
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`At this juncture, the Court does not need to decide whether plaintiffs are, indeed,
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`prevailing parties under section 505 and otherwise entitled to attorneys’ fees. Rule 54(d)(2),
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`Fed. R. Civ. P., permits a claim for attorneys’ fees to be made by motion filed no later than 14
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`days after the entry of judgment.
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`Plaintiffs also urge that because this action was pled as a class action, a different
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`result should obtain because the defendants are unfairly trying to pick off class representatives.
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`The invocation of Rule 23, Fed. R. Civ. P., adds nothing to plaintiffs’ argument. This Court
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`lacks subject matter jurisdiction over the case. Rule 23 is a procedural mechanism that is limited
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`in its reach by the Rules Enabling Act, 28 U.S.C. § 2072 and Rule 82, Fed. R. Civ. P. (“These
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`rules do not extend. . . the jurisdiction of the district courts”.) The invocation of Rule 23 in the
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`text of a complaint cannot insulate the putative class representatives from a claim that the
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`controversy has become moot. Cf. Amchem Prods., Inc. v. Windsor, 521 U.S. 591, 613 (1997)
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`(“Rule 23’s requirements must be interpreted in keeping with Article III constraints, and with
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`the Rules Enabling Act, which instructs that rules of procedure ‘shall not abridge, enlarge or
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`modify any substantive right’. . . .”).
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`D. Substitution of Unknown Person or Persons as Plaintiffs
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`This Court lacks subject matter jurisdiction, including for the purpose of
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`substituting party-plaintiffs. It has no power to add a new and different plaintiff to cure the
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`mootness of the existing action.2 See Lunney v. U.S., 319 F.3d 550, 560 (2d Cir. 2003)
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`2 Even if the jurisdictional obstacle were not present, this would not be a proper case to permit a substitution. The
`motion to substitute was filed on May 10, 2019, over 9 months ago. (Doc 32.) No proposed class representative
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`Case 1:16-cv-04464-PKC Document 43 Filed 02/28/20 Page 7 of 7
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`(declining to remand to permit substitution of a possible new plaintiff where there was no subject
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`matter jurisdiction); Sonterra Capital Master Fund Ltd. v. Credit Suisse Grp. AG, 409 F. Supp.
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`3d 261, 272 (S.D.N.Y. 2019) (declining to permit the substitution of a new class representative
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`where none of the pre-existing plaintiffs had constitutional standing: “[T]he invocation of the
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`procedural mechanisms of amendments and substitutions may not generate jurisdiction from
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`nothing.”), appeal docketed, No. 19-3367 (2d Cir. Oct. 16, 2019).
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`CONCLUSION
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`In the absence of a live case or controversy, the motion (Doc 37) to dismiss is
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`GRANTED and plaintiffs’ claims under the Copyright Act are dismissed without prejudice. The
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`motion (Doc 32) to substitute a party is DENIED. The Clerk shall enter final judgment for the
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`defendants and terminate the motions.
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`SO ORDERED.
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`Dated: New York, New York
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`February 28, 2020
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`was named in the motion and none has emerged. The allegations of this complaint are quite specific as to the past
`and future intentions of the two plaintiffs and their band. (Compl. ¶¶ 56, 58-59, 61-62.). Any “substitute” plaintiff
`would be asserting new facts unique to himself or herself. Rule 15, Fed. R. Civ. P., encourages the grant of leave to
`amend “when justice so requires.” The interest of justice would not support adding a new claim by a new plaintiff
`of unknown dimensions.
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