STRATCHBORNEO v. ARC MUSIC CORP. No. 67 Civ. 2927.
357 F.Supp. 1393 (1973)
Ruth E. STRATCHBORNEO d/b/a Cepha Publishing Co., Plaintiff, v. ARC MUSIC CORP. et al., Defendants.
United States District Court, S. D. New York.
March 23, 1973.
Mayer & Nussbaum, P.C., by Theodore Nussbaum, New York City, for defendants.
BRIEANT, District Judge.
Plaintiff, a citizen of California, brought this action on July 31, 1967, to enjoin infringement of plaintiff's copyrighted musical compositions and for an accounting of profits and damages resulting from past infringement. By an amended complaint, she also seeks damages for unfair competition, in the sale and exploitation of her musical compositions by defendants, which were allegedly "passed off" as owned by defendants.
Defendants' counterclaim charges infringement by plaintiff of its copyrighted musical compositions and unfair competition.
Parties and Jurisdiction
Defendants Arc Music Corporation ("Arc") and Dare Music, Inc. ("Dare") are New York corporations. Defendant McKinley Morganfield is a citizen of Illinois, who has performed professionally as a singer and musician in this District and throughout the country under his professional name, "Muddy Waters".
The Court has jurisdiction of this action as to the first nine counts, arising under the copyright laws of the United States, 28 U.S.C. § 1338, and has pendent and diversity jurisdiction over Count X in the Complaint, alleging unfair competition.
What is MOJO?
An understanding of this litigation requires first that we define "MOJO". MOJO is a collective noun used to describe one or more talismanic objects believed to have power intrinsic to their nature, and believed able to impart power, or ward off evil or misfortune by being worn close to the body of, or possessed by, the person to whom the MOJO appertains. A simple example of MOJO would be a rabbit's foot. Other examples of MOJO, mentioned from time to time in the trial record, include such amulets as black cat bones, shrunken heads, lodestones, half dollar with seeds, four leaf clover, ashes, blacksnake skin, strands of hair and teeth. MOJO is often worn around the neck in a leather bag or carried on the person. MOJO may, in a pastoral society, be taken into the fields with the cattle.
Reliance on and belief in MOJO naturally leads to the conversational gambit, "Have you got your MOJO working?", or "I've got my MOJO working." A person approaching a crisis, such as an examination at school, would be sure to have his MOJO with him, and working.
Use of MOJO and reference to it in conversation and reliance on it, has been found generally among black people in the rural South. Although the expression "voodoo" has been used in the trial record, MOJO is different from voodoo.
MOJO is a commonplace part of the rhetoric of the culture of a substantial portion of the American people. As a figure of speech, the concept of having, or not having, one's MOJO working is not something in which any one person could assert originality, or establish a proprietary right. See infra, p. 1404, et seq.
The expressions MOJO and "I've got my MOJO working", also have a lewd secondary or slang meaning. That double entendre will be most apparent in the lyrics of some of the musical compositions hereinafter referred to, particularly those of Bill Cosby (Ex. N) and Jimmy Smith (Ex. 10).
Miss Stratchborneo, plaintiff herein, was 32 years of age at the time of trial. Since 1959 she has been engaged under the trade name of Cepha Publishing Co., in publishing sheet music recordings and verse, arrangements, words and music for songs of the sort commonly described as "Pop Rock", in that portion of the music field called "Rhythm & Blues", or sometimes, just "R&B".
Prior to 1959, she worked as a singer and musician, performing in clubs, military installations, hospitals, prisons and other places, and was also employed during 1957 and 1958 by a record company.
She is a vocalist and dancer, has done some acting and recording and prior to 1959 assisted at a record publishing company, in teaching, vocalizing, choreography and selecting R&B tunes for release.
She has written so-called "lead sheets", whereby popular songs are merchandised, and whereby applications for copyright are made. She owns various record labels, including Tide, Edit and Colbert.
Origin of Plaintiff's (Triune/Bright) Musical Composition.
During childhood, plaintiff had often versified about MOJO activity and had used the expression "I got my MOJO working". She sang a song containing the lyric versification "Got My MOJO Working", in 1955 in connection with a local television commercial for a California automobile dealer, and thereafter sang songs about MOJO with various verses at various times and places in California, at volunteer performances given for servicemen in hospitals, to prisoners, or wherever her services were welcomed.
In 1960, she wrote a lead sheet (Ex. 1) entitled "MOJO WORKOUT" (hereinafter for convenience, the "Bright" version). This contained the words "I got my MOJO working". The author listed on the lead sheet as having created the words and music is "Julian Bright a/k/a Larry Bright", but I am satisfied that in fact Larry Bright was not the author of "MOJO WORKOUT".
Shortly thereafter, in about 1960, plaintiff created a new lead sheet, also entitled "MOJO WORKOUT" (Ex. 2), bearing the inscription "words and music by Triune-Bright". Triune is a name used by plaintiff and two other persons; Miss Paula Sapp a/k/a Paula DePores and Mrs. Orena Fulmer. These persons, acting in concert, describe themselves as "Triune". Sapp and Fulmer participated in some undisclosed manner with plaintiff in the creation of the second version of "MOJO WORKOUT," sometimes described for convenience as the "Triune-Bright" version.
There is also a third, Triune, version entitled "MOJO WORKOUT (GOT MY MOJO WORKING)", which purportedly was created January 4, 1960. This date is based upon a certificate by a California notary in the nature of an acknowledgement by plaintiff, DePores and Fulmer, attached by a staple to a lead sheet not otherwise filed or published.
I decline to find that this so-called Triune version was completed prior in time to the Bright version. The notary public was not produced before me, and there is no corroboration, or intrinsic evidence which demonstrates that this document existed prior in time to the Larry Bright copyright certificate filed March 16, 1960 in the Copyright Office. This issue, however, is not critical to the case.
By an assignment dated March 27, 1960, and filed in the Copyright Office on February 20, 1964, Julian Bright
Bright recorded, and plaintiff released, or published, under the trade name "Tide Records" a 45 r.p.m. single, entitled "MOJO WORKOUT (Dance)". This record listed Julian Bright as the author and Larry Bright (actually the same person), as the performer. Cepha Publishing Co. was indicated thereon as the copyright owner.
The Larry Bright record of 1960 unmistakably was derived from the two lead sheets, Bright version and Triune-Bright version, previously mentioned. It was released in March, 1960, and was played with some frequency during that year on various radio stations specializing in pop rock music.
Plaintiff designed a dance referred to as "Do The MOJO". The intricate steps of this juvenile diversion were written out with diagrams and distributed to the public by some of the record dealers (Ex. 8). Bright, a singer and guitar player who is white, came to be known as Larry "Mojo" Bright. See publicity still photograph, Ex. 9. In the "Fabulous Forty Survey" of radio station KFWB in Los Angeles, California, "MOJO WORKOUT" appears as a "record heard first on KFWB". It was 33rd in popularity for the week ending April 16, 1960, 22nd for the week ending April 23, 1960, and 16th for the week ending May 7, 1960.
A trade publication "The Billboard", on June 6, 1960, showed "MOJO WORKOUT" as No. 2 in a list of 15, below the so-called "Hot Hundred", and on June 25, 1960, "Cashbox Top Hundred", a trade publication, showed the record as No. 96. Plaintiff also licensed "MOJO WORKOUT" to others to make recordings.
As damages were stipulated to be disposed of subsequent to the trial of the issues of this action, in the event an accounting should be directed, there was no proof received by me as to the profits realized from the sale of records, mechanical licenses, or the licensing of radio
Plaintiff testified that the first notice she had of defendants' activities with respect to MOJO was when Jimmy Smith, in 1966, issued a record in the same market, recorded by him on Verve Records, a division of Metro, Goldwyn, Mayer, Inc., and entitled "Got My MOJO Working". This record indicates defendant Morganfield as the author, and defendant Arc as the proprietor of the work. It occupies both sides of a single 45 r.p.m. record and the label indicates that it was taken from an album entitled "Got My MOJO Working".
Plaintiff asked Verve Records to take a mechanical license, but Verve declined to do so, having already taken a license from Dare. This led to a demand and refusal, and this litigation eventuated.
Plaintiff testified that she had never heard any other professional renditions of "I've Got My MOJO Working" prior to 1966, and that no complaints or demands upon her had been made by any other record company, publishing company or performer.
Plaintiff did not perform "MOJO WORKOUT" as found in the Triune-Bright version or in the Larry Bright version prior to 1960. I decline to find that the Triune version was performed by or for her prior to March, 1960. She did, as heretofore noted, perform MOJO songs according to the same rhythm, using different words from time to time, and changed the words many times to suit the occasion. The expression "I've Got My MOJO Working" was, however, used by her in connection with a pop rock song beginning in 1955.
By her own evidence, plaintiff did not write the Triune version any earlier than Thanksgiving, 1959, or about January 4, 1960. On all of the evidence, I find that origin of the Triune version prior to the Bright version (Ex. 1), or prior to March, 1960, is not established.
Since 1955, plaintiff and her colleagues in Triune have always called their song "Got My MOJO Working", or "MOJO WORKOUT". The melody and rhythm never changed, but the lyrics changed many times.
In answers to interrogatories, plaintiff stated that she and Miss Sapp and Mrs. Fulmer completed the musical composition during January, 1960, after "working for a period of time" in Los Angeles.
They never filed a claim for copyright of the Triune version; they did claim copyright in Triune-Bright, as previously noted, on December 19, 1966, and plaintiff filed for the Bright version, in Bright's name on March 25, 1960.
Origin of Defendants' (Foster) Musical Composition.
Saul Rabinowitz, President and principal of defendant Dare, is presently engaged as an executive of CBS Records International and directs the operations of overseas music publishing firms controlled by CBS. He also has oversight of licensing recorded products from other companies for distribution overseas by CBS and advises with respect to products recorded by overseas companies. Formerly, he was principally engaged in the conduct of Dare's record business.
Rabinowitz first met defendant Preston Foster, also known as Red Foster, in 1957, at which time Foster visited him, offered for sale and played a number of songs. He sang a song, "I'VE GOT MY MOJO WORKING", accompanying himself by guitar, and played a demonstration record which he had previously recorded (Ex. F).
Foster, on October 29, 1956, had filed a claim to copyright for that song as author. On January 9, 1957, Dare entered into a mimeographed form publisher's contract with Preston Foster, by which it acquired "I've Got My Mo-Jo Working". By his agreement, Foster reserved a royalty and assigned his copyright. The assignment was recorded February 16, 1965 in the Copyright Office. In 1957, Dare also acquired the
A month or two later in 1957, Rabinowitz played Foster's demonstration record for singer Ann Cole. Ann Cole learned the song and recorded her artistic arrangement or version of it for Baton Records, under license from Dare. This record is entitled "Got My Mo-Jo Working (But It Just Won't Work On You)", and lists Foster as the author. The Ann Cole record was released, at least prior to April 20, 1957, because "Cashbox", a trade publication, on that date, refers to the Ann Cole rendition as the "Cashbox R&B Sleeper of the Week".
At about the same time, a record "Got My Mojo Working", sung by Muddy Waters, was issued by Chess Records. This also was referred to as a "sleeper of the week" in the same April 20, 1957 edition of Cashbox. Rabinowitz learned of the Muddy Waters rendition within two or so days after samples of the Ann Cole record had been released to distributors.
Rabinowitz testified that Miss Cole had just returned from a road tour with Muddy Waters' band. He concluded that she had been singing the song while on tour, and that Muddy Waters had liked it and recorded it, claiming authorship for himself. The Muddy Waters record bears a copyright credit for defendant Arc, and shows defendant McKinley Morganfield, the true name of Muddy Waters, as the author of the work, and "Muddy Waters" as the singer.
Rabinowitz asserted Dare's claim of ownership by reason of assignment to it of the Preston Foster copyright and made claim on Arc. This controversy was later settled by an agreement between Dare and Arc by which Arc, in effect, in consideration of a royalty interest in "Got My Mojo Working", conceded the validity of the Preston Foster copyright, ownership thereof by Dare, and infringement, although not so denominated. As between Dare and Arc, Dare was to be deemed for all purposes the owner of the song in dealing with third parties. Morganfield (Waters) was not a signatory to the settlement agreement (Ex. 26) between Dare and Arc.
Long prior to the release in March, 1960, of the plaintiff's Larry Bright record, "MOJO WORKOUT", and prior to March 25, 1960, when Larry Bright, as purported author filed claim to copyright, through plaintiff, defendants Dare, Arc, Foster and Morganfield were all asserting a property interest in and had recorded and marketed MOJO songs.
Performance and Use by Others.
Dare had licensed Verve Records, a division of Metro-Goldwyn-Mayer ("MGM"), to record and issue the 1966 Jimmy Smith version "Got My MOJO Working" (Ex. 10), and had received license fees from Broadcast Music Incorporated ("BMI") and from MGM.
Producers of other records licensed by Dare and BMI, as distributor of performance royalties, have withheld payment pending the termination of this litigation. Dare has also issued licenses to many other recording artists for "Got My Mojo Working", or "I've Got My Mojo Working". These include such well known record companies as Atlantic, Columbia, Capital, London and Liberty Records. Recording artists include Johnny Rivers, Sandy Nelson, Sam the Sham & The Pharaohs, Muddy Waters, Jimmy Smith, Art Blakey, Chico Hamilton, Carla Thomas, Lester Lanin, Manfred Mann, The Capitols, Conway Twitty, Columbus Smith, The Powers of Blue, The Knockouts, The Big Beats, Billy Hawks, Ben Bernay, Long John Baldry and Linda Gayle.
Dare and plaintiff have each received performance royalties from BMI. Rabinowitz explained that whether the computer tabulation credited the royalty to plaintiff, or to Dare depended on how the titles were reported; that the titles "MOJO WORKOUT," "I'VE GOT MY MOJO WORKING" and "GOT MY MOJO WORKING" are so similar that "depending on how the radio station announces its use, that will govern BMI as to which publisher to pay" (tr. p. 203). This practical problem is, however, beyond the scope of this litigation.
Proof of copying is basic to any claim of infringement. Idential works, which these are not, could, if independently created, each receive statutory copyright protection, and each withstand charges, by the other, of infringement. Sheldon v. Metro-Goldwyn Pictures Corp.,
There is no direct evidence of access by Bright or Triune or plaintiff to Preston Foster's lead sheet, or demonstration record, or to the Ann Cole or Muddy Waters recordings, and likewise, no such evidence of access by Preston Foster, Ann Cole or Muddy Waters to the various versions of music and lyrics having to do with MOJO, which plaintiff was singing at hospitals, prisons and elsewhere, prior to 1957.
Defendants' position (tr. p. 464) is that the chronology of the discs and striking similarities in the lyrics and
Plaintiff also seeks to draw an inference of copying circumstantially from the records themselves, but her attempt is frustrated by her inability to prove existence and ownership of an identifiable version prior to March, 1960.
The only evidence of access by plaintiff is found in the fact that the Waters and Cole versions were sold widely in 1957 in the field of music in which plaintiff was engaged and were broadcast. This is the "reasonable opportunity to view or read plaintiff's work", which is all that is needed to show access. Bevan v. Columbia Broadcasting System, Inc.,
Even if access cannot be established by showing a reasonable opportunity for the alleged infringer to have seen or heard the complaining work, access, and also copying, may be inferred where the accused work is "strikingly similar" to a pre-existing complaining work. Arnstein v. Porter,
Expert testimony may and should be used to aid the Court in analyzing the works involved in order to draw the inference of copying from striking similarities. Arnstein v. Porter, supra, 154 F.2d at 468.
Plaintiff's expert, Mr. Reuben Phillips, is an accomplished musician. He is the music director of the Appollo Theatre in New York City, having held that position since 1952. Previously, he was a musician with various bands, including Andy Kirk, Lionel Hampton, Louis Jordan and Count Basie, and was a musical conductor with Eartha Kitt and Josephine Baker. He played saxophone with these bands and was a saxophone player in the Roxy Theatre house band. He is an experienced music arranger, and now writes original music, primarily in the area of rock and roll arrangements, for the house band at the Apollo Theatre.
Mr. Phillips, a black man, grew up in Providence, Kentucky. He had heard the lyric, or expression, "Got my MOJO working, but it just won't work on you" first during his childhood in that rural community. He describes MOJO as a phrase used in family relationships, in the context of "I'll put my Mojo on you", or "You got your Mojo with you today?". As a child he said that he wore MOJO around his neck, and used that kind of expression in conversations, with other children in his home town.
Plaintiff urges defendants may not rely on the Foster lead sheet, demonstration record and the Foster copyright registration because of technical deficiencies in the presentation as filed. The lyric is clear enough on Foster's lead sheet. Phillips, plaintiff's expert, admits that the first section of the lead
Following the observation of the ordinary observer or audience member, the average reasonable man (Harold Lloyd Corporation v. Witwer, 9 Cir.,
Nor, can we say from any evidence before us that Bright or plaintiff infringed the lyrics used prior to 1960 by any of defendants' artists. The whole concept of MOJO in the context used in these lyrics was so commonplace in 1957 as to be substantially within the public domain. In presenting a MOJO song in a dance version, and because of the obvious differences in the lyrics and music, I find that the Bright version did not infringe any of the defendants' versions.
In determining what part of a complaining work is protected by copyright, it must be remembered that the Copyright Act does not afford a monopoly over ideas. Morrissey v. Proctor & Gamble,
Nor will substantial similarity be found if only a small, common phrase appears in both the accused and complaining songs; unless the reappearing phrase is especially unique or qualitatively important, there is no basis for inferring copying. See Heim v. Universal
Additionally, material that is in the public domain can be used by an author; substantial similarity is not met by noting the appearance of such material in the accused work. Sheldon v. Metro-Goldwyn Pictures Corp., supra, cf. Whitney v. Ross Jungnickel, Inc.,
Where, as here, words and music have been integrated in a single work, the copyright of such work as a musical composition will protect against unauthorized use of the words or lyrics alone, as well as against unauthorized use of the music alone or of a combination of music and words. However, in determining whether an accused, short popular song consisting of words and music, of the type involved herein, replicates the essence of a complaining work, initial focus should be placed on music and lyrics taken together, as necessary parts of the composition. See Shapiro, Bernstein & Co. v. Jerry Vogel Music Co.,
I find no infringement of plaintiff's "MOJO WORKOUT" by the 1966 Jimmy Smith record. Licensed by Dare, the latter is a reasonable artistic variation on the Preston Foster 1956 composition, as modified by the Cole and Waters versions. A licensee has the right so to alter a copyrighted work to suit his own style and interpretation. Its source remains with defendant's prior use of the same song.
Aside from some similarities in the opening passages, the works sound, to the non-professional customer's ear, quite different from plaintiff's work. Even the first sections seem to convey different moods. The lyrics vary, and in Smith the secondary lewd meaning of MOJO is perhaps more apparent. No infringement is found of plaintiff's copyright by the Jimmy Smith 1966 record.
It follows from the foregoing that all parties to this litigation have the right to produce their respective different MOJO works. Plaintiffs may produce the dance, "MOJO WORKOUT," and songs which represent identifiable versions of it, or the Triune-Bright version. Defendant Dare and its licensees may continue to produce and use the musical composition reflected in the Foster lead sheets as originally performed by Foster, Ann Cole, Muddy Waters and Jimmy Smith.
The Court finds sufficient differences in the plaintiff's composition and the defendants' compositions to militate against finding of infringement, copying or passing off. The lyrics, where the greatest similarity occurs, relate to a matter which may not be appropriated, no more so than any other song of unrequited love or lust.
No evidentiary basis is found to sustain plaintiff's 10th cause of action for unfair competition, by "passing off". Plaintiff did not, nor could she, attain any right to secondary meaning, or the identification of the title, lyric or concept as plaintiff's work in the public mind. Defendants have not traded unlawfully or otherwise upon plaintiff's popularity or good will, or passed off any songs or musical compositions or lyrics as plaintiff's, to her damage. Nor have they succeeded in convincing the record manufacturing trade that plaintiff's musical compositions are owned or controlled by either Arc or Dare (Complaint, ¶95). Nor do I find
The Court is not unaware of the difficulties created in this action by the problem of mechanical licenses of MOJO songs which others have recorded, or will. [17 U.S.C. § 1(e); American Metropolitan Enterprises of New York, Inc. v. Warner Bros. Records, Inc.,
For example, Cosby performed a MOJO song which could have been performed as a non-infringing work and free of any royalty [cf. Sheldon v. Metro-Goldwyn Pictures Corp.,
While we understand the practical difficulty presented by the fact that the titles are similar, and when performances are reported, it is often impossible to ascertain later, exactly whose composition was used, this problem is not one which we may hope to resolve on this trial record.
As we have determined that the respective compositions do not infringe, and are each entitled to the protection of the copyright laws, we are unable to divide such performance and mechanical royalties as may presently be held in escrow by BMI. Furthermore, BMI is not a party to the litigation, nor are those who were obligated in the first instance to make the payments.
Each party has contributed enough original words and music to the MOJO idea, and to a phrase in public domain, so as to have an original work, which has and is entitled to copyright protection and which the owner may exploit.
I find that plaintiff is the owner of a valid copyright, originally issued to Bright in 1960, and duly assigned to her, covering the words and music of "MOJO WORKOUT," a dance, as performed by Bright on a recording, Ex. 6, and also as set forth in a 1960 lead sheet filed in the Copyright Office, and a further copyright for additional words and music filed in 1966 (No. EU 969465), and that such work is an original composition of words and music, made by Miss Stratchborneo, Miss Sapp a/k/a De Pores and Mrs. Fulmer, which does not infringe any rights of defendants.
I find that defendant Dare is the owner of a valid copyright originally issued to Foster on October 29, 1956 (No. EU 462214) and duly assigned to Dare, covering the words and music of "GOT MY MOJO WORKING," as set forth in a 1956 lead sheet filed in the Copyright Office and on the demonstration record, Ex. 6, and that such work is an original musical composition of words and music made by Preston Foster, which does not infringe any rights of plaintiff.
I find no unfair competition, or "passing off" by any party to this litigation, of its or her musical property as that of the other.
The Court adjudges that all relief shall be denied, and that no party recover costs. The Clerk shall enter judgment as required by Rule 58, F.R.Civ.P. The foregoing constitutes findings of fact and conclusions of law as required by Rule 52, F.R.Civ.P.
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