Saint-Amour v. The Richmond Organization, Inc.

Background

The plaintiffs challenged defendants’ claimed interest under the Copyright Act in the song “This Land is Your Land.” They alleged that the song was in the public domain and that copyrights and registrations associated with it were invalid. They also sought the return of licensing fees, including a $45.50 compulsory mechanical license fee paid to produce and distribute 500 copies of the song. The plaintiffs said they wanted to distribute a recording with the same lyrics and a different melody and make a music video, but feared copyright enforcement.

In an earlier order, the late Judge Deborah A. Batts dismissed all of the plaintiffs’ state-law claims as preempted by the Copyright Act and otherwise denied defendants’ motion to dismiss. The state-law dismissals were with prejudice.

Events After the Earlier Order

After that order, defendants and Woody Guthrie Publications, Inc. delivered a covenant not to sue. The covenant unconditionally and irrevocably promised not to bring or allow copyright claims against the plaintiffs concerning any past, current, or future conduct connected with audio or audiovisual works of which the plaintiffs were authors or co-authors. It also covered certain related entities and people connected with the defendants and plaintiffs. Defendants also offered to refund the full $45.50 licensing fee.

Defendants argued that these actions eliminated a live case or controversy, meaning a real ongoing dispute that a federal court has power to decide. Plaintiffs opposed dismissal, argued that the covenant did not resolve their state-law claims or possible claim for attorney’s fees, and contended that the class-action allegations prevented defendants from ending the case by addressing the named plaintiffs’ claims. Plaintiffs also sought to substitute an unnamed person or persons as plaintiffs.

Court’s Analysis

The court applied the rule that a sufficiently broad promise not to enforce a claimed intellectual-property right can make a dispute moot. It concluded that the covenant was extremely broad and covered the plaintiffs’ past, present, and future conduct. The defendants therefore met their burden of showing that they could not reasonably be expected to resume enforcement of their claimed copyright rights against the plaintiffs.

The court rejected plaintiffs’ argument based on the state-law claims because those claims had already been dismissed with prejudice. It also held that the possibility of an attorney’s-fee award could not preserve an underlying claim when no live dispute remained. The court noted that it did not need to decide whether the plaintiffs were prevailing parties or were otherwise entitled to fees.

The court further held that the class-action allegations did not prevent mootness. Class-action rules could not expand the court’s jurisdiction or protect the named plaintiffs from the loss of a live dispute. Because the court lacked subject-matter jurisdiction, it also lacked power to add a new and different plaintiff to cure the existing mootness problem.

Disposition

The court granted defendants’ motion to dismiss. It dismissed the plaintiffs’ claims under the Copyright Act without prejudice. It denied the motion to substitute a party, directed the clerk to enter final judgment for defendants, and terminated the motions.