Germain v. Martin

Background

Patrice Germain sued Christopher Edward Martin, also known as DJ Premier, Gang Starr Enterprises LLC, Ingrooves/Fontana, Universal Music Group, Apple Music, and Apple Inc. Germain alleged that the defendants’ song “Family and Loyalty,” released in 2019, infringed his copyrighted sound recording of “Diamonds Are Forever.”

Germain alleged that he created “Diamonds Are Forever” with Keith Elam, also known as GURU, in or around 2006. He claimed sole ownership of the song because Elam was paid as a “work for hire.” Germain also alleged that Martin and Gang Starr copied the recording without permission and that the two songs were substantially similar.

Motion to Dismiss

Martin and Gang Starr moved to dismiss the First Amended Complaint under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a complaint does not state a legally sufficient claim. The court considered whether Germain alleged enough facts to plausibly establish ownership of the copyrighted work, an element of his copyright-infringement claim.

The court explained that a work made for hire belongs to the employer or other qualifying commissioning party only if it falls within the statutory definition. That definition includes a work prepared by an employee within the scope of employment or, in certain commissioned-work categories, a work covered by a written agreement signed by the parties stating that it is a work made for hire.

Court’s Analysis

The court found that Germain’s amended complaint relied mainly on his copyright-registration allegations and mentioned “work for hire” without providing supporting facts. The court inferred from Germain’s allegation that Elam was fully compensated for his performance that Elam was not treated as Germain’s ongoing employee under the conventional meaning of that term.

Because Germain did not allege that Elam was his employee acting within the scope of employment, the court required facts showing a written agreement that classified Elam’s work as made for hire. The court found no such allegations or supporting facts in the amended complaint. It also declined to consider factual assertions in Germain’s attorney’s opposition affirmation because they were not part of the pleadings, and stated that the affirmation did not supply the missing facts in any event.

Disposition

Judge Andrew L. Carter, Jr. granted the defendants’ motion to dismiss. The court dismissed the complaint without prejudice and granted Germain leave to file an amended complaint. The court stated that additional information about whether Elam was Germain’s employee or whether a written agreement existed would help assess the complaint’s sufficiency.