Batiste v. Island Records Inc ( 1999 )


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  •                         Revised July 23, 1999
    
                    IN THE UNITED STATES COURT OF APPEALS
    
                            FOR THE FIFTH CIRCUIT
    
                            _____________________
    
                                No. 98-30046
                            _____________________
    
    
              DAVID BATISTE; PAUL BATISTE; MICHAEL BATISTE,
    
                               Plaintiffs-Appellants-Cross-Appellees,
    
              v.
    
              ISLAND RECORDS INC; ISLAND RECORDS LTD; MCA   MUSIC
              PUBLISHING, A Division of MCA, Inc; ATTRELL   CORDES,
              also known as P M Dawn, doing business as P   M Dawn;
              WADE FEATHERSTONE, Individually; GEE STREET   RECORDS
              INC,
    
                               Defendants-Appellees-Cross-Appellants
    
              and
    
              ISAAC BOLDEN,
    
                               Defendant-Appellee.
    
    _________________________________________________________________
    
              Appeals from the United States District Court
                  for the Eastern District of Louisiana
    _________________________________________________________________
                               June 21, 1999
    Before KING, Chief Judge, and REAVLEY and BENAVIDES, Circuit
    Judges.
    
    KING, Chief Judge:
    
         Attrell Cordes, a successful singer and songwriter who
    
    performs with his brother under the name “P.M. Dawn,” used a
    
    digital sample of a musical composition that was originally
    
    written and recorded by David, Paul, and Michael Batiste.    Cordes
    included the digital sample in a song on a highly successful
    
    album that was released by Island Records, Inc. and Gee Street
    
    Records, Inc., and the Batistes seek damages and injunctive
    
    relief for alleged copyright infringement and violations of the
    
    Lanham Act, 15 U.S.C. § 1125, the Louisiana Unfair Trade
    
    Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419, and Louisiana
    
    state laws regarding conversion and misappropriation.    The
    
    district court dismissed the Batistes’ claims against Wade
    
    Featherstone for lack of personal jurisdiction and granted all
    
    defendants except Isaac Bolden summary judgment on all claims,
    
    except Paul and Michael Batiste’s allegations of conversion and
    
    misappropriation, which the court allowed Paul and Michael
    
    Batiste to voluntarily dismiss without prejudice.   We affirm the
    
    judgment of the district court in all respects except that we
    
    determine the district court abused its discretion by allowing
    
    Paul and Michael Batiste to dismiss their surviving claims
    
    without prejudice, and we remand with instructions to enter
    
    judgment in favor of all defendants except Bolden on these claims
    
    as well.
    
                          I. FACTUAL BACKGROUND
    
         David, Paul and Michael Batiste (collectively, the Batistes)
    
    are three brothers who, while performing together as a group
    
    known as “David Batiste & the Gladiators,” wrote a musical
    
    composition called “Funky Soul” in 1968.   The Batistes performed
    
    “Funky Soul” in New Orleans and recorded the song in 1970 with
    
                                     2
    the assistance of Isaac Bolden, a local music publisher and
    
    record producer.
    
         David Batiste, the eldest brother and leader and manager of
    
    the group, entered into two written contracts with Bolden:     (1)
    
    a Songwriter’s Contract governing rights to the “Funky Soul”
    
    musical composition, and (2) an Artist Contract governing rights
    
    to the “Funky Soul” physical master tape and sound recording.
    
    Under the Songwriter’s Contract, David Batiste warranted that the
    
    “Funky Soul” musical composition was his “sole, exclusive and
    
    original work” and transferred that composition, including the
    
    title, words, music, and the exclusive right to secure copyright,
    
    to Bolden.   Under the Artist Contract, David Batiste transferred
    
    to Bolden all rights to the physical master tape and the sound
    
    recording of “Funky Soul” embodied thereon, including the
    
    “exclusive, unlimited and perpetual right . . . to manufacture,
    
    advertise, sell, lease, license or otherwise use or dispose of,
    
    in any or all fields of use, by any method now or hereafter
    
    known, throughout the world, records embodying the performances.”
    
         Shortly after the recording session for “Funky Soul,” Bolden
    
    obtained a certificate of copyright registration for the musical
    
    composition identifying David Batiste as its sole writer.    Bolden
    
    authorized the manufacture and release of two records containing
    
    “Funky Soul” in 1970, but neither record was a commercial
    
    success.
    
    
    
                                     3
         Attrell Cordes and his brother perform together in the
    
    highly successful musical group “P.M. Dawn.”    In 1992, Cordes
    
    purchased a copy of the “Funky Soul” record and decided to sample
    
    it for use in a song of his own entitled “So On and So On” (“So
    
    On”).    Cordes recorded a six and one-half second portion of
    
    “Funky Soul” from the record he purchased and used digital
    
    technology to modify the recording.    Cordes used this digital
    
    sample in his song “So On” that was included on “the Bliss
    
    Album,” which Island Records, Inc.1 and its affiliate, Gee Street
    
    Records, Inc. (Gee Street), released on March 15, 1993.
    
         Prior to “the Bliss Album” release, Gee Street determined
    
    that Bolden held all rights to the “Funky Soul” musical
    
    composition and sound recording and entered into three contracts
    
    with him:    (1) a Master Recording Sampling License, on January
    
    26, 1993; (2) a Mechanical License Agreement, on March 3, 1993;
    
    and (3) an Administration Agreement, on April 27, 1993.    Under
    
    the Master Recording Sampling License, Bolden granted Gee Street
    
    “the non-exclusive right to manufacture [r]ecords embodying that
    
    certain Master Recording, entitled ‘So On & So On’ . . . [which]
    
    contains an interpolation of [Bolden’s] master recording,
    
    entitled ‘Funky Soul.’”    Under the Mechanical License Agreement,
    
    
         1
           At the time of the events leading to this lawsuit, Island
    Records, Inc. and Island Records, Ltd. were both subsidiaries of
    Polygram N.V. For the purposes of this opinion, we will refer to
    Island Records, Inc., Island Records, Ltd., or both, as Island
    Records.
    
                                      4
    Bolden consented to Gee Street’s release of “So On,” which
    
    “interpolates a portion of the musical composition entitled
    
    ‘Funky Soul.’”   Finally, under the Administration Agreement,
    
    Bolden and MCA Music Publishing (MCA) agreed that Bolden owns a
    
    forty percent share of “So On,” and that Bolden “grants licenses
    
    and assigns to [MCA] exclusively the copyright and all other
    
    rights . . . in and to [‘So On’].”   In exchange for his allowing
    
    the use of the “Funky Soul” sample, Gee Street paid Bolden a
    
    $15,000 advance against record royalties in February 1993.
    
         The liner notes accompanying “the Bliss Album” credit “D.
    
    Batiste” as a co-writer of “So On” and state that “‘Funky Soul’
    
    performed by David Batiste & The Gladiators [is] used under
    
    license by Isaac Bolden.”   The Batistes admit that they learned
    
    that a portion of “Funky Soul” was used in “So On” no later than
    
    July 1993, and that they prepared and submitted an application to
    
    register as co-writers of “So On” with Broadcast Music, Inc., a
    
    well-known performing rights society.
    
                          II. PROCEDURAL HISTORY
    
         The Batistes filed this suit in the United States District
    
    Court for the Eastern District of Louisiana on March 10, 1995,
    
    alleging that Island Records, Gee Street, MCA, Cordes, Bolden,
    
    and Wade Featherstone violated federal copyright laws, 17 U.S.C.
    
    §§ 101-603; the Lanham Act, 15 U.S.C. § 1125; the Louisiana
    
    Unfair Trade Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419
    
    (LUTPL), and Louisiana state laws regarding conversion and
    
                                     5
    misappropriation.   In addition, the Batistes allege in their
    
    complaint that Bolden breached his fiduciary duty and contractual
    
    obligation by failing to account for income that he has received
    
    from the sale or distribution of records containing “Funky Soul”
    
    and by participating in the misappropriation of the Batistes’
    
    property and infringement of their copyrights.    The Batistes seek
    
    injunctive and declaratory relief, an accounting of all amounts
    
    received from transactions relating to “the Bliss Album” and
    
    “Funky Soul,” and damages.
    
         Wade Featherstone filed a motion on October 15, 1996 to
    
    dismiss the Batistes’ claims for lack of personal jurisdiction
    
    and failure to state a claim upon which relief may be granted.
    
    Featherstone asserted that he is a citizen and resident of
    
    England and lacked sufficient jurisdictional contacts with the
    
    state of Louisiana.   Island Records, MCA, Gee Street, and Cordes
    
    (collectively, defendants) filed a motion on December 6, 1996 to
    
    dismiss the Batistes’ claims of copyright infringement for lack
    
    of subject matter jurisdiction, arguing that the Batistes could
    
    not demonstrate that they had obtained or applied to obtain a
    
    valid copyright registration for “Funky Soul.”2   Defendants also
    
         2
           Although the district court’s order on September 8, 1997
    states that defendants’ motion to dismiss for lack of subject
    matter jurisdiction is “granted,” the accompanying opinion offers
    no support for this conclusion. In fact, the opinion states that
    the Batistes have standing to bring a copyright infringement
    claim as beneficial owners of Bolden’s copyright, and the
    district court ultimately granted defendants summary judgment on
    the copyright claims. Defendants note this inconsistency and
    
                                     6
    filed a motion for summary judgment on all claims, and the
    
    Batistes filed a motion seeking summary judgment in their favor
    
    on their copyright, Lanham Act, and misappropriation claims
    
    against defendants and Bolden.
    
         The district court granted defendants summary judgment on
    
    all of David Batiste’s claims, and on all of Paul and Michael
    
    Batiste’s claims except conversion and misappropriation.3    The
    
    
    argue on appeal that if the district court did deny their motion
    to dismiss for lack of subject matter jurisdiction, it did so in
    error.
    
         We find no merit in defendants’ argument. Initially, we
    note that the district court subsequently amended its September 8
    order to explicitly state that it had granted summary judgment on
    all of David Batiste’s claims, and on all of Paul and Michael
    Batiste’s claims except their state-law claims for conversion and
    misappropriation, and that the court entered partial judgment on
    the copyright claims under Federal Rule of Civil Procedure 54(b).
    These actions demonstrate that the district court did deny
    defendants’ motion to dismiss, and we agree with its
    determination that the Batistes may properly assert their
    copyright infringement claims as beneficial owners of Bolden’s
    registered copyright. See 17 U.S.C. § 501(b) (“The legal or
    beneficial owner of an exclusive right under a copyright is
    entitled . . . to institute an action for any infringement of
    that particular right committed while he or she is the owner of
    it.”); Cortner v. Israel, 
    732 F.2d 267
    , 271 (2d Cir. 1984) (“When
    a composer assigns copyright title to a publisher in exchange for
    the payment of royalties, an equitable trust relationship is
    established between the two parties which gives the composer
    standing to sue for infringement of that copyright.”).
         3
           The district court appears to have included Bolden in its
    disposition of the motions for summary judgment and dismissal.
    We have carefully reviewed the record, however, and we find no
    indication that Bolden either joined defendants’ motion for
    summary judgment or made such a motion on his own behalf. We
    therefore necessarily construe the district court’s order as
    granting summary judgment only on those claims made against the
    moving defendants, leaving the Batistes’ claims against Bolden
    unaffected.
    
                                     7
    court found that the Songwriter’s Contract effectively
    
    transferred any interest David Batiste had in “Funky Soul” to
    
    Bolden, that Bolden had authorized defendants to use the
    
    composition, and that therefore the Batistes had failed to raise
    
    a genuine issue of material fact on their copyright infringement
    
    claims.   The district court also determined that the Batistes
    
    failed to raise an issue of material fact that defendants had
    
    violated the Lanham Act because “Funky Soul” was attributed to
    
    “David Batiste & The Gladiators” in the liner notes accompanying
    
    the album, and that defendants’ actions were not unfair or
    
    deceptive under the LUTPL because David Batiste transferred any
    
    interest he had in the “Funky Soul” composition to Bolden in
    
    exchange for royalties and the Batistes failed to produce any
    
    evidence indicating that defendants knew or should have known of
    
    any interest in “Funky Soul” held by Paul and Michael Batiste.
    
    Finally, the district court granted summary judgment on David
    
    Batiste’s conversion and misappropriation claims because he had
    
    transferred any ownership rights he held to Bolden in 1970, but
    
    the court refused to grant summary judgment on similar claims
    
    raised by Paul and Michael Batiste because they “need only
    
    establish that the defendants are in possession of property which
    
    belongs to them.”   In subsequent orders, the district court
    
    dismissed the Batistes’ claims against Featherstone as lacking
    
    
    
    
                                     8
    personal jurisdiction and dismissed their remaining state-law
    
    claims under 28 U.S.C. § 1367(c).4       The Batistes timely appeal.
    
                              III. DISCUSSION
    
         The Batistes argue on appeal that the district court
    
    erroneously granted defendants summary judgment on their
    
    copyright infringement, Lanham Act, LUTPL, and conversion and
    
    misappropriation claims, and that Featherstone had sufficient
    
    minimum contacts with the state of Louisiana for the court to
    
    exercise personal jurisdiction.5       Defendants cross-appeal,
    
    arguing that the district court abused its discretion by
    
    dismissing without prejudice the Batistes’ surviving state-law
    
    claims.6   We address these arguments in turn.
    
                         A. Copyright Infringement
    
    
    
    
         4
           Under 28 U.S.C. § 1367(c), a district court “may decline
    to exercise supplemental jurisdiction over a claim . . . if--
    (1) the claim raises a novel or complex issue of State law,
    (2) the claim substantially predominates over the claim or claims
         over which the district court has original jurisdiction,
    (3) the district court has dismissed all claims over which it has
         original jurisdiction, or
    (4) in exceptional circumstances, there are other compelling
         reasons for declining jurisdiction.”
         5
           The Batistes failed to provide any argument in either
    their briefs or at oral argument supporting their appeal of the
    district court’s order dismissing Featherstone for lack of
    personal jurisdiction, and we consider this claim abandoned. See
    Cinel v. Connick, 
    15 F.3d 1338
    , 1345 (5th Cir. 1994).
         6
           Bolden does not appeal, and we do not consider, the
    district court’s dismissal without prejudice of the Batistes’
    claims against him under 28 U.S.C. § 1367(c).
    
                                       9
         The Batistes argue that the district court erred in granting
    
    summary judgment on their copyright infringement claims because
    
    defendants’ use of “Funky Soul” infringed the “Funky Soul”
    
    copyright and was not authorized by the 1970 Songwriter’s and
    
    Artist Contracts or the three contracts that Bolden entered into
    
    in 1993.   The Batistes contend that the Songwriter’s and Artist
    
    Contracts between David Batiste and Bolden are invalid because
    
    David Batiste does not remember signing them and the contracts
    
    are “suspect enough to raise a factual issue.”    Furthermore, the
    
    Batistes argue that these contracts did not anticipate or
    
    authorize the digital sampling method at issue, and that the
    
    contracts cannot apply to Paul and Michael Batiste because they
    
    were minors at the time and did not authorize David Batiste to
    
    negotiate on their behalf.
    
         The Batistes allege that even if the 1970 contracts did
    
    allow Bolden to license the use of a digital sample of “Funky
    
    Soul” to defendants, the contracts that Bolden executed in 1993
    
    do not authorize defendants’ use.    Specifically, the Batistes
    
    claim that either (1) “So On” is a “derivative work,” and the
    
    1993 contracts serve only to authorize and share profits from the
    
    new material Cordes added to the song, not the pre-existing work;
    
    or (2) the contracts between Bolden and Gee Street/MCA purport to
    
    render “So On” a “joint work,” a characterization that would
    
    effectively merge Cordes’s contribution with Bolden’s rights in
    
    “Funky Soul,” and that such a characterization under the “Twelfth
    
                                    10
    Street Rag” doctrine7 makes the contracts invalid because they
    
    attempt to achieve a result prohibited by copyright law.8
    
         “We review a grant of summary judgment de novo, applying the
    
    same criteria used by the district court in the first instance.”
    
    Texas Manufactured Housing Ass’n v. City of Nederland, 
    101 F.3d 1095
    , 1099 (5th Cir. 1996); see Tolson v. Avondale Indus., Inc.,
    
    
    141 F.3d 604
    , 608 (5th Cir. 1998).   Summary judgment is proper
    
         7
           The “Twelfth Street Rag” doctrine derives from the Second
    Circuit’s decision in Shapiro, Bernstein & Co. v. Jerry Vogel
    Music Co., 
    221 F.2d 569
    , modified on reh’g, 
    223 F.2d 252
     (2d Cir.
    1955), allowing the assignee of an ownership interest in a
    musical composition to add new elements to a pre-existing work
    and thereby create new ownership interests in the resulting
    “joint work,” extinguishing any other ownership interests in the
    pre-existing work. Congress overruled this doctrine in 1976 by
    adopting the current definition for “joint work,” which requires
    that each author intend the merger at the time the author
    prepares his or her contribution. See 17 U.S.C. § 101 (defining
    “joint work” as a “work prepared by two or more authors with the
    intention that their contributions be merged into inseparable or
    interdependent parts of a unitary whole”).
         8
           The Batistes make two other arguments respecting the
    validity of the 1993 contracts of which we easily dispose. The
    Batistes claim that (1) the alleged infringements occurred before
    any licenses were issued by Bolden, and defendants cannot
    demonstrate that the agreements preceded the release of “the
    Bliss Album,” and (2) defendants attempted to assign the benefits
    of the contracts to each other without obtaining Bolden’s prior
    written consent. We note initially that the summary judgment
    evidence shows that the Master Recording Sampling License and
    Mechanical License Agreement had already been executed at the
    time of release and that the remaining, unexecuted contract does
    not purport to authorize the use of “Funky Soul.” In addition,
    to the extent that any writing requirement in the contracts
    applies to assignments among defendants, the summary judgment
    evidence demonstrates that Bolden waived such a requirement and
    implicitly consented to defendants’ use. See Lulirama Ltd. v.
    Axcess Broadcast Servs., Inc., 
    128 F.3d 872
    , 879 (5th Cir. 1997)
    (stating that, under federal copyright law, a nonexclusive
    license may be granted orally or implied from conduct).
    
                                    11
    “if the pleadings, depositions, answers to interrogatories, and
    
    admissions on file, together with the affidavits, if any, show
    
    that there is no genuine issue as to any material fact and that
    
    the moving party is entitled to a judgment as a matter of law.”
    
    FED. R. CIV. P. 56(c); see Celotex Corp. v. Catrett, 
    477 U.S. 317
    ,
    
    327 (1986).   The party moving for summary judgment bears the
    
    initial burden of showing an absence of evidence to support the
    
    nonmoving party’s case, see id. at 322-27, but, once this burden
    
    has been met, the nonmoving party can resist the motion by making
    
    a positive showing that a genuine issue of material fact exists,
    
    see Anderson v. Liberty Lobby, Inc., 
    477 U.S. 242
    , 250 (1986).
    
    The nonmovant must go beyond the pleadings and designate specific
    
    facts showing that there is a genuine issue of material fact for
    
    trial.   See Celotex, 477 U.S. at 324-25.     Finally, we note that a
    
    grant of summary judgment may be affirmed on any ground that was
    
    raised to the district court and upon which both parties had the
    
    opportunity to present evidence.       See Conkling v. Turner, 
    18 F.3d 1285
    , 1296 n.9 (5th Cir. 1994).
    
         The only question that we face regarding the Batistes’
    
    copyright claims is whether the Batistes have successfully
    
    demonstrated a genuine issue of material fact that the multiple
    
    contracts among the parties are insufficient to authorize
    
    defendants’ use of a digital sample of “Funky Soul” in their song
    
    “So On.”   After carefully examining the contracts between David
    
    Batiste and Bolden and the contracts between Bolden and Gee
    
                                      12
    Street/MCA, we agree with the district court’s conclusion that
    
    there is no such issue of material fact and that defendants are
    
    entitled to summary judgment on these claims.
    
         The Batistes point to no evidence supporting their
    
    allegation that the 1970 contracts are invalid or otherwise
    
    “suspect,” and David Batiste’s inability to remember signing them
    
    is not sufficient to raise a material issue as to the validity of
    
    the agreements.   See Lone Star Indus., Inc. v. Nelstad Material
    
    Corp., 
    811 F. Supp. 147
    , 149 (S.D.N.Y. 1993).   David Batiste
    
    granted Bolden the entire musical composition, including the
    
    exclusive right to secure copyright, “all rights of whatsoever
    
    nature” relating to the copyright, and the right to license, “in
    
    any or all fields of use, by any method now or hereafter known,
    
    throughout the world, records embodying the performances.”    Such
    
    a grant is sufficiently broad to include the licensing of a
    
    record containing a digital sample of “Funky Soul.”   Cf. Boosey &
    
    Hawkes Music Publishers, Ltd. v. Walt Disney Co., 
    145 F.3d 481
    ,
    
    485-88 (2d Cir. 1998) (concluding that 1939 agreement conveying
    
    the right “to record [a composition] in any manner, medium or
    
    form” for use “in [a] motion picture” is sufficiently broad to
    
    include distribution of the motion picture in laser disc format);
    
    Maljack Prods., Inc. v. GoodTimes Home Video Corp., 
    81 F.3d 881
    ,
    
    885 (9th Cir. 1996) (stating that right to synchronize music in
    
    any future technologies, including videocassettes, is included in
    
    clause granting party all the music rights of a motion picture).
    
                                    13
    Finally, we note that the validity of Paul and Michael Batiste’s
    
    allegations that David Batiste did not have authority to enter
    
    the 1970 contracts on their behalf is immaterial to their claims
    
    of copyright infringement against any party’s use that was
    
    authorized by their brother.     See Quintanilla v. Texas Television
    
    Inc., 
    139 F.3d 494
    , 498 (5th Cir. 1998) (“‘A co-owner of a
    
    copyright cannot be liable to another co-owner for infringement
    
    of the copyright.’”) (quoting Oddo v. Ries, 
    743 F.2d 630
    , 632-33
    
    (9th Cir. 1984)); Cortner v. Israel, 
    732 F.2d 267
    , 271 (2d Cir.
    
    1984) (“It is elementary that the lawful owner of a copyright is
    
    incapable of infringing a copyright interest that is owned by
    
    him; nor can a joint owner of a copyright sue his co-owner for
    
    infringement.”); MELVIN B. NIMMER & DAVID NIMMER, 1 NIMMER   ON   COPYRIGHT
    
    § 6.10 (1999) [hereinafter NIMMER] (“[A]n authorization to the
    
    defendant from one joint owner will be an effective defense to an
    
    infringement action brought by another joint owner.”).
    
         We also find no merit in the Batistes’ arguments that the
    
    1993 contracts between Bolden and Gee Street/MCA are invalid
    
    because they purport to create a “joint work.”       The contracts
    
    recognize that Bolden, as the owner of the “Funky Soul”
    
    copyright, retains his copyright therein.       See Gilliam v.
    
    American Broadcasting Cos., 
    538 F.2d 14
    , 22 (2d Cir. 1976)
    
    (stating that provision in license retaining rights in pre-
    
    existing script “suggest[s] that the parties did not consider
    
    themselves joint authors of a single work”).       Although the
    
                                       14
    Administration Agreement does provide that Bolden and MCA jointly
    
    own “So On” as an authorized, derivative work, joint ownership of
    
    a derivative work does not alone create a “joint work.”      The
    
    policies underlying the “Twelfth Street Rag” doctrine thus do not
    
    apply, and we see no conflict between the 1993 contracts and
    
    Congress’s abrogation of that doctrine. Furthermore, it is clear
    
    from the face of the 1993 contracts that they form a license to
    
    use “Funky Soul” and do not merely authorize and share profits
    
    from Cordes’s additional material.    We therefore conclude that
    
    the district court was correct in its determination that no
    
    genuine issue of material fact exists regarding defendants’
    
    authorized use of “Funky Soul” and properly entered summary
    
    judgment on the copyright infringement claims in their favor.
    
                              B. Lanham Act
    
         The Batistes argue that the district court erroneously
    
    granted summary judgment on their claims that defendants
    
    “mutilate[d]” “Funky Soul” and that this “abuse” of their work
    
    amounts to “reverse passing off” in violation of § 43(a) of the
    
    Lanham Act, 15 U.S.C. § 1125(a).9    Relying on the Second
    
         9
             Under § 43(a),
    
         Any person who, on or in connection with any goods or
         services . . . uses in commerce any word, term, name,
         symbol, or device, or any combination thereof, or any false
         designation of origin, false or misleading description of
         fact, which . . . is likely to cause confusion, or to cause
         mistake, or to deceive as to the affiliation, connection, or
         association of such person with another person, or as to the
         origin, sponsorship, or approval of his or her goods,
    
                                   15
    Circuit’s decision in Gilliam, the Batistes claim that an author
    
    has a “legal and moral right to have his work attributed to him
    
    in the form in which he wrote it,” and that defendants’ licenses
    
    “would not have permitted defendants to mutilate plaintiffs’
    
    works.”   Finally, the Batistes argue that defendants failed to
    
    properly credit their contribution to “So On” because Michael and
    
    Paul Batiste’s “authorship contributions” were not mentioned and
    
    that the “Funky Soul Track” constitutes the entire instrumental
    
    track in “So On.”
    
         In Gilliam, the Second Circuit considered a claim by a group
    
    of authors and performers known as “Monty Python” seeking a
    
    preliminary injunction to prevent the American Broadcasting
    
    Company (ABC) from broadcasting edited versions of three of their
    
    programs.   See 538 F.2d at 17.   The Second Circuit enjoined the
    
    broadcasts, concluding that the group had shown a likelihood of
    
    succeeding on the merits of their claims that the editing
    
    exceeded the scope of ABC’s license.    See id. at 22-23.   The
    
    court further determined that the group would likely succeed on
    
    its claim under the Lanham Act that, “regardless of the right ABC
    
    had to broadcast an edited program, the cuts made constituted an
    
    actionable mutilation of Monty Python’s work,” and that such a
    
    
    
         services, or commercial activities by another person . . .
         shall be liable in a civil action by any person who believes
         that he or she is or is likely to be damaged by such act.
    
    15 U.S.C. § 1125(a).
    
                                      16
    cause of action “finds its roots in the continental concept of
    
    droit moral, or moral right, which may generally be summarized as
    
    including the right of the artist to have his work attributed to
    
    him in the form in which he created it.”   Id. at 23-24; see 3
    
    NIMMER at § 8D.04[A][2].
    
         Even if we were to adopt the reasoning of the Second Circuit
    
    and determine that the “manipulation” that “Funky Soul” suffered
    
    is sufficient to state a cause of action under the Lanham Act, we
    
    still must conclude that summary judgment in favor of defendants
    
    was proper because the Batistes have failed to demonstrate the
    
    existence of a genuine issue of likelihood of confusion.      See 15
    
    U.S.C. § 1125(a)(1)(A) (prohibiting misleading representations of
    
    fact which are likely to cause confusion, mistake, or deception);
    
    3 NIMMER at § 8D.04[A][2] (stating that, for a plaintiff to
    
    prevail on such a manipulation claim, “it must invoke the
    
    appropriate elements for relief under the Lanham Act, rather than
    
    simply serving as a back-door method for reviving failed
    
    copyright claims”) (footnote omitted).   The Batistes point to no
    
    evidence in the record demonstrating that consumers were confused
    
    or deceived by either the use of a digital sample of “Funky Soul”
    
    in “So On” or the attribution to “David Batiste & The Gladiators”
    
    as a co-author of “So On.”   The Batistes’ claim that Paul and
    
    Michael Batiste were improperly excluded from the liner notes
    
    accompanying the album also fails to suggest that consumers were
    
    confused, especially because the liner notes do credit the name
    
                                    17
    of the band in which both Paul and Michael Batiste performed.
    
    Finding no evidence of a genuine issue of consumer confusion, we
    
    affirm the district court’s grant of summary judgment in favor of
    
    defendants on the Batistes’ Lanham Act claims.
    
                           C. State-Law Claims
    
       The Batistes argue that the district court erred in granting
    
    defendants summary judgment on their claims of unfair trade
    
    practices under the LUTPL, conversion, and misappropriation.      The
    
    Batistes again contend that the district court improperly
    
    determined that the Songwriter’s and Artist Contracts that David
    
    Batiste entered into in 1970 are valid and authorize defendants’
    
    use of “Funky Soul.”
    
         The Batistes’ claims of unfair trade practices, conversion
    
    and misappropriation are delictual under Louisiana law and are
    
    therefore subject to a one-year prescriptive period.    See LA.
    
    REV. STAT. ANN. § 51:1409(E) (stating that a private action under
    
    the LUTPL “shall be prescribed by one year running from the time
    
    of the transaction or act which gave rise to this right of
    
    action”); LA. CIV. CODE ANN. § 3492 (“Delictual actions are subject
    
    to a liberative prescription of one year.”); Johnson v. Concordia
    
    Bank & Trust Co., 
    671 So. 2d 1093
    , 1098 (La. Ct. App. 1996)
    
    (“Since conversion is a tort, the prescriptive period for
    
    delictual actions applies to plaintiff’s action.”); Adams v.
    
    First Nat’l Bank of Commerce, 
    644 So. 2d 219
    , 222-23 (La. Ct.
    
    App. 1994) (determining that prescriptive period of one year
    
                                    18
    applies to cause of action for unfair trade practices); National
    
    Union Fire Ins. Co. v. Spillars, 
    552 So. 2d 627
    , 630 (La. Ct.
    
    App. 1989) (finding a suit based on misappropriation or wrongful
    
    taking “is therefore a delictual action and subject to liberative
    
    prescription of one year”).   As a general rule, the prescriptive
    
    period begins to run when the plaintiff has actual or
    
    constructive knowledge of the alleged tortious act.     See Mistich
    
    v. Cordis Mfg. Co., 
    607 So. 2d 955
    , 956 (La. Ct. App. 1992).
    
         “[T]he Bliss Album” containing the digital sample of “Funky
    
    Soul” was released in March 1993, and the Batistes admit that by
    
    July 1993 they knew that defendants had used “Funky Soul” without
    
    their permission.   Nonetheless, the Batistes did not file this
    
    suit until March 1995.   In their reply brief, the Batistes argue
    
    that this court held in Songbyrd, Inc. v. Bearsville Records,
    
    Inc., 
    104 F.3d 773
     (5th Cir. 1997), that an action to recover for
    
    misappropriation of masters and sound recordings is not subject
    
    to liberative prescription, and that “this case involves a direct
    
    dispute over ownership of the master rights.”   The Batistes
    
    further contend that their remaining state law claims are saved
    
    from prescription by the doctrine of equitable tolling--
    
    specifically, they claim that defendants’ “absolute refusal to
    
    provide information” after the Batistes contacted Bolden and
    
    defendants in mid-1993 acted to toll the prescriptive period and
    
    makes their present claims timely.
    
    
    
                                    19
           The Batistes’ arguments misconstrue both our decision in
    
    Songbyrd and the equitable tolling doctrine, and neither of these
    
    contentions saves their state-law claims from the applicable one-
    
    year prescriptive period.    Initially, we note that our
    
    determination that the plaintiff’s cause of action in Songbyrd
    
    was not subject to the one-year prescriptive period relied on our
    
    conclusion that the plaintiff’s claim, which sought recognition
    
    of its ownership interest in physical master recordings and the
    
    return of those recordings, was a “revindicatory action” seeking
    
    the return of property rather than a “personal action.”      See
    
    Songbyrd, 104 F.3d at 777.      The Batistes, however, do not assert,
    
    and there is no evidence suggesting, that defendants ever
    
    possessed the physical master recording or any other physical
    
    property belonging to the Batistes.     Rather, the Batistes argue
    
    that the “Funky Soul” sound recording was misappropriated because
    
    defendants used it in “So On,” and they seek damages for this
    
    use.    The Batistes’ claims are therefore properly considered
    
    “personal actions” and are subject to the one-year prescriptive
    
    period.    See id. at 777-79.    Finally, we decline the Batistes’
    
    invitation to invoke the equitable tolling doctrine because the
    
    Batistes admit that they knew the facts underlying their cause of
    
    action and sought legal advice on how to pursue their claims more
    
    than one year prior to filing suit against defendants.      Cf.
    
    Kavanaugh v. Long, 
    698 So. 2d 730
    , 738 (La. Ct. App. 1997)
    
    (stating that equitable tolling suspends prescriptive period for
    
                                       20
    medical malpractice claim, “but only until the patient knew or
    
    should have known of the malpractice or concealment from other
    
    sources”).   We therefore affirm the district court’s grant of
    
    summary judgment in favor of defendants on the Batistes’ claims
    
    of unfair trade practices, and on David Batiste’s claims of
    
    misappropriation and conversion.
    
                          D. Pendent Jurisdiction
    
         Following the district court’s entry of summary judgment on
    
    all the Batistes’ claims against defendants except Paul and
    
    Michael Batiste’s claims of conversion and misappropriation, the
    
    court declined to retain supplemental jurisdiction over the
    
    remaining claims under 28 U.S.C. § 1367 and granted the Batistes’
    
    motion to voluntarily dismiss these claims without prejudice.
    
    Defendants appeal the district court’s decision to dismiss these
    
    claims without prejudice and urge us to render judgment on these
    
    claims as well, arguing that they are also time-barred because
    
    they were filed more than one year after Paul and Michael Batiste
    
    admit they knew the facts underlying their causes of action.
    
    Defendants contend that the district court abused its discretion
    
    by allowing the Batistes’ voluntary dismissal just one month
    
    before trial and after defendants had spent three years and more
    
    than one million dollars fighting this litigation, and defendants
    
    further note that the parties had engaged in extensive discovery
    
    including numerous depositions, provided the district court with
    
    
    
                                    21
    hundreds of pages of briefing and several hours of oral argument,
    
    and had “extensively addressed” these remaining claims.
    
         We review a district court’s decision to decline
    
    jurisdiction over pendent state-law claims for an abuse of
    
    discretion.    See Robertson v. Neuromedical Ctr., 
    161 F.3d 292
    ,
    
    296 (5th Cir. 1998); McClelland v. Gronwaldt, 
    155 F.3d 507
    , 519
    
    (5th Cir. 1998).   “Our review is guided by the relevant statutory
    
    provisions governing the exercise of supplemental jurisdiction,
    
    see 28 U.S.C. § 1367(c), as well as the Supreme Court’s
    
    articulation of the scope and nature of district courts’
    
    discretion in exercising jurisdiction over pendent state law
    
    claims.”    McClelland, 155 F.3d at 519.   We must therefore
    
    consider both the statutory provisions of 28 U.S.C. § 1367(c) and
    
    the balance of the relevant factors of judicial economy,
    
    convenience, fairness, and comity that the Supreme Court outlined
    
    in Carnegie-Mellon University v. Cohill, 
    484 U.S. 343
    , 350-51
    
    (1988), and United Mine Workers v. Gibbs, 
    383 U.S. 715
    , 726
    
    (1966), in determining whether the district court abused its
    
    discretion in allowing the Batistes’ voluntary dismissal of their
    
    remaining state-law claims.
    
         Although we have stated that our “general rule” is to
    
    decline to exercise jurisdiction over pendent state-law claims
    
    when all federal claims are dismissed or otherwise eliminated
    
    from a case prior to trial, this rule is neither mandatory nor
    
    absolute.   McClelland, 155 F.3d at 519 (citing Wong v. Stripling,
    
                                     22
    
    881 F.2d 200
    , 204 (5th Cir. 1989)); see Cohill, 484 U.S. at 350
    
    n.7 (stating that “in the usual case in which all federal-law
    
    claims are eliminated before trial, the balance of factors to be
    
    considered under the pendent jurisdiction doctrine . . . will
    
    point toward declining to exercise jurisdiction over the
    
    remaining state-law claims”).   Thus, while the district court’s
    
    dismissal of the Batistes’ federal claims “provides ‘a powerful
    
    reason to choose not to continue to exercise jurisdiction,’ no
    
    single factor is dispositive in this analysis.”   McClelland, 155
    
    F.3d at 519 (quoting Cohill, 484 U.S. at 351); see Newport Ltd.
    
    v. Sears, Roebuck & Co., 
    941 F.2d 302
    , 307 (5th Cir. 1991).     We
    
    therefore must review the district court’s decision “in light of
    
    the specific circumstances of the case at bar.”   McClelland, 155
    
    F.3d at 519; see Parker & Parsley Petroleum Co. v. Dresser
    
    Indus., 
    972 F.2d 580
    , 585 (5th Cir. 1992).
    
         We begin our analysis of the factors relevant to the pendent
    
    jurisdiction inquiry by noting that the remaining claims do not
    
    involve any “novel or complex” issues of state law.   Newport
    
    Ltd., 941 F.2d at 308 (stating that district court abused its
    
    discretion in allowing plaintiff to voluntarily dismiss state-law
    
    claims because, inter alia, the remaining issues “present no
    
    novel or especially unusual questions which cannot be readily and
    
    routinely resolved by the court a 4quo”); cf. McClelland, 155
    
    F.3d at 519-20 (“[O]ur section 1367(c) analysis results in the
    
    conclusion that remand is appropriate” based, in part, on the
    
                                    23
    presence of “at least one ‘novel or complex’ issue of state
    
    law.”); Parker & Parsley Petroleum, 972 F.2d at 589 (stating that
    
    principles of federalism and comity “point strongly toward
    
    dismissal” because “[a]ll of the remaining legal issues of the
    
    case, of course, are of state law . . . [and] are difficult
    
    ones”).   The district court here had already granted defendants
    
    summary judgment on some state-law claims, and, as we set forth
    
    above, all state-law claims are prescribed.   The absence of any
    
    difficult state-law questions thus weighs heavily toward our
    
    conclusion that the district court abused its discretion in
    
    refusing to retain jurisdiction over the remaining claims.
    
         We also conclude that the factors of judicial economy,
    
    convenience, and fairness to the parties strongly point toward
    
    our conclusion that the district court erred by not retaining
    
    jurisdiction here.   The case had been pending in the district
    
    court for almost three years when the court allowed the Batistes’
    
    voluntary dismissal, and the trial was scheduled to begin one
    
    month later.   See Newport Ltd., 941 F.2d at 307-08 (“[A]fter four
    
    years of litigation produced 23 volumes and thousands of pages of
    
    record, the preparation of a pretrial order exceeding 200 pages,
    
    over a hundred depositions, and according to counsel nearly two
    
    hundred thousand pages of discovery production, the declining to
    
    hear this case on the eve of trial constituted an abuse of the
    
    trial court’s discretion.”); cf. Cohill, 484 U.S. at 351 (“When
    
    the single federal-law claim in the action was eliminated at an
    
                                    24
    early stage of the litigation, the District Court had a powerful
    
    reason to choose not to exercise jurisdiction.”).   The instant
    
    case has produced more than sixteen volumes of record over the
    
    course of three years, numerous depositions and discovery
    
    disputes, and significant consideration by the district court of
    
    multiple motions to dismiss claims or grant summary judgment.
    
    See Parker & Parsley Petroleum, 972 F.2d at 587 (“[T]he amount of
    
    judicial resources that the case has consumed is most important
    
    for our analysis as an indication of the familiarity of the forum
    
    with the case and its ability to resolve the dispute
    
    efficiently.”).   The familiarity of the district court with the
    
    merits of the Batistes’ claims demonstrates that further
    
    proceedings in the district court would prevent redundancy and
    
    conserve scarce judicial resources, and we therefore conclude
    
    that principles of judicial economy, convenience, and fairness to
    
    the parties weigh heavily toward our determination that the
    
    district court abused its discretion in dismissing the Batistes’
    
    remaining claims.
    
         After considering and weighing all the factors present in
    
    this case, and relying especially on our conclusion that the
    
    district court was intimately familiar with the Batistes’ claims
    
    and the absence of any difficult state-law issue in the remaining
    
    claims, we thus conclude that the district court abused its
    
    discretion and reverse its decision dismissing Paul and Michael
    
    Batiste’s conversion and misappropriation claims without
    
                                    25
    prejudice.   Furthermore, in the interest of further judicial
    
    economy and in light of our determination above that the
    
    Batistes’ state-law claims are prescribed, we remand Paul and
    
    Michael Batiste’s conversion and misappropriation claims to the
    
    district court with instructions to enter judgment in favor of
    
    all defendants except Bolden, disposing of all claims against
    
    such defendants.
    
                              IV. CONCLUSION
    
         For the foregoing reasons, we AFFIRM the judgment of the
    
    district court granting defendants summary judgment and
    
    dismissing Featherstone for lack of personal jurisdiction,
    
    REVERSE the district court’s dismissal of Paul and Michael
    
    Batiste’s misappropriation and conversion claims against all
    
    defendants except Bolden, and REMAND with instructions to enter
    
    judgment in favor of such defendants on those claims.
    
    
    
    
                                    26
    

Document Info

DocketNumber: 98-30046

Filed Date: 7/23/1999

Precedential Status: Precedential

Modified Date: 2/19/2016

Authorities (28)

Texas Manufactured v. Nederland City of, et , 101 F.3d 1095 ( 1996 )

Mine Workers v. Gibbs , 383 U.S. 715 ( 1966 )

Carnegie-Mellon Univ. v. Cohill , 484 U.S. 343 ( 1988 )

Shapiro, Bernstein & Co., Inc. v. Jerry Vogel Music Co., ... , 221 F.2d 569 ( 1955 )

Celotex Corporation v. Myrtle Nell Catrett, Administratrix ... , 477 U.S. 317 ( 1986 )

Anderson v. Liberty Lobby , 477 U.S. 242 ( 1986 )

Shapiro, Bernstein & Co., Inc. v. Jerry Vogel Music Co., ... , 223 F.2d 252 ( 1955 )

Dino Cinel v. Harry F. Connick, Individually and as ... , 15 F.3d 1338 ( 1994 )

Sidney Wong v. John Stripling, Etc. , 881 F.2d 200 ( 1989 )

Jack Cortner and Jon Silberman v. Robert Israel, Score ... , 732 F.2d 267 ( 1984 )

Frank Oddo v. Jack W. Ries, Mme Publications, Mme ... , 743 F.2d 630 ( 1984 )

Richard L. Conkling v. Bert S. Turner , 18 F.3d 1285 ( 1994 )

Terry Gilliam, Plaintiffs-Appellants-Appellees v. American ... , 538 F.2d 14 ( 1976 )

Newport Limited, a Partnership in Commendam, Cross-... , 941 F.2d 302 ( 1991 )

abraham-quintanilla-jr-doing-business-as-selena-y-los-dinos , 139 F.3d 494 ( 1998 )

lulirama-ltd-inc-spencer-michlin-plaintiffs-counter , 128 F.3d 872 ( 1997 )

gregory-a-tolson-v-avondale-industries-inc-avondale-industries-inc , 141 F.3d 604 ( 1998 )

songbyrd-inc-v-bearsville-records-inc-albert-b-grossman-estate-of , 104 F.3d 773 ( 1997 )

boosey-hawkes-music-publishers-ltd-plaintiff-appellee-cross-appellant , 145 F.3d 481 ( 1998 )

Maljack Productions, Inc. v. Goodtimes Home Video Corp. , 81 F.3d 881 ( 1996 )

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