Keep On Kicking Music, Inc v. Universal Music Group, Inc.

Background

The dispute concerns the musical composition and sound recording “Espoir Composition X,” referred to as “ECX,” and the album Viva Les Difficiles. Third-Party Plaintiffs Kreyol Music, Inc. and Melodie Makers, Inc. alleged that Robert Martino infringed their copyrights under Haitian and United States law. They also alleged that Martino breached a 2007 contract by participating in the 2022 remastering and rerelease of “ECX” and by rereleasing “Oye Chica” and “Ti DWET” in the 2021 album The Legend Is Back.

The 2007 contract gave Kreyol rights concerning the album Oye Chica and a first option for one later album. It also required Martino to bring certain inquiries, proposals, and offers concerning his music-industry involvement to the label’s attention.

Copyright Claim

Martino moved to dismiss under Federal Rule of Civil Procedure 12(b)(6), which tests whether a complaint states a legally sufficient claim. The court held that Haitian law governed ownership because “ECX” was written, recorded, and first released in Haiti. The Third-Party Plaintiffs, however, did not provide sufficient legal authority or expert briefing explaining Haitian copyright law, including whether Haiti recognizes a work-for-hire doctrine and whether Martino’s relationship with the band would qualify under that doctrine.

The court also found gaps in the alleged chain of ownership. The complaint did not adequately explain how ownership moved from Martino to Henry Celestin and then from Celestin to Yvon Cline, who allegedly sold rights to Jeff Wainwright and, ultimately, to the Third-Party Plaintiffs. Statements that Wainwright or the Third-Party Plaintiffs owned the copyrights were conclusory and did not adequately establish ownership. The court therefore granted Martino’s motion to dismiss the copyright infringement claim.

The court granted the Third-Party Plaintiffs leave to amend the copyright claim if they could provide the missing information. Any amended complaint had to be filed within 28 days of the opinion, and the parties were directed to propose a schedule for briefing on Haitian copyright law and the work-for-hire doctrine.

Contract Claims

The court rejected Martino’s argument that the contract required the dispute to be litigated in Florida. The Florida clause was permissive, not exclusive, and did not prevent the Southern District of New York from exercising jurisdiction or require transfer of the case.

The court interpreted the contract as clearly covering Oye Chica and one subsequent album, rather than all of Martino’s later musical work. Because “ECX” was not alleged to be part of Oye Chica or the immediately following album, the court held that the contract did not cover the 2022 remastering of “ECX” and dismissed that contract claim.

The court reached a different result for “Oye Chica” and “Ti DWET.” Although the contract’s scope was clear, its reference to the “duration of this contract” did not explain when the agreement ended. Because a reasonable interpretation could mean the contract was still in effect when Martino rereleased those songs in 2021, the court denied the motion to dismiss that contract claim. The court also found that the alleged failure to provide notice could plausibly have caused damages, including lost opportunities to prevent the rerelease or pursue a joint project.

The court further held that the contract claims concerning “Oye Chica” and “Ti DWET” were not preempted by copyright law. The claims involved contractual control over production, publishing, distribution, and promotion, as well as a notice requirement, rather than only rights equivalent to those protected by copyright.

Disposition

The court granted Martino’s motion to dismiss as to the copyright infringement claim and the breach of contract claim regarding the remastering of “ECX” and Viva Les Difficiles, and those claims were dismissed. The court denied the motion as to the breach of contract claim regarding “Oye Chica” and “Ti DWET.” The Third-Party Plaintiffs were granted leave to amend the third-party complaint, subject to the 28-day deadline.