Hines v. Roc-A-Fella Records, Inc.
- James Oetken
- 1:19-cv-04587
- U.S. District Court · Southern District of New York
- 10
In Hines v. Roc-A-Fella Records, Judge Oetken dismissed claims against the individual defendants, granted label dismissals, and allowed amendment subject to payment.
Ernie Hines’s copyright and declaratory-judgment claims were dismissed as to Shawn Carter and Timothy Mosley because of insufficient service of process, and the copyright claims against the Record Label Defendants were dismissed for inadequate allegations of substantial similarity. Hines was allowed to amend subject to paying the Record Label Defendants’ costs and attorney’s fees and to filing within sixty days.
What happened
In Hines v. Roc-A-Fella Records, Ernie Hines alleged that songs by Jay-Z and Timbaland used samples from a song he coauthored without permission. He sued Jay-Z, Timbaland, and four record-label defendants for copyright infringement and sought a declaration that he jointly owned or authored the newer songs.
The court granted the record-label defendants’ motions to dismiss because Hines did not identify which parts of his song were copied or which parts of the newer songs were substantially similar. The court also granted Shawn Carter’s motion and Timothy Mosley’s motion based on insufficient service, granted Mosley’s request to set aside the default, and granted Hines permission to amend if he paid the record labels’ costs and attorney’s fees. Hines’s motion to supplement the record was denied as moot.
Judge Oetken directed Hines to file an amended complaint within sixty days and stated that failure to meet that deadline would result in dismissal with prejudice.
The detailed version
- Hines v. Roc-A-Fella Records, Inc. · No. 1:19-cv-04587
- James Oetken
- Apr. 16, 2020
Background
Ernie Hines alleged that he coauthored the 1969 song “Help Me Put Out The Flame (In My Heart).” He claimed that a sample from that song was used without his permission or compensation in “Paper Chase,” performed by Jay-Z and composed by Jay-Z and Timbaland, and “Toe 2 Toe,” performed by Ginuwine and composed by Timbaland.
Hines asserted copyright infringement claims against Shawn Carter, professionally known as Jay-Z; Timothy Mosley, professionally known as Timbaland; and Roc-A-Fella Records, LLC, Def Jam Recordings, UMG Recordings, Inc., and Sony Music Entertainment, which the opinion collectively called the Record Label Defendants. He also sought a declaration against Jay-Z and Timbaland that he was a joint owner or joint author of “Paper Chase” and “Toe 2 Toe.”
The Record Label Defendants moved to dismiss for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6). Jay-Z and Timbaland moved to dismiss for insufficient service of process under Rule 12(b)(5). Timbaland also moved to set aside the certificate of default. Hines moved for leave to amend and moved to supplement the record.
Insufficient Service of Process
Federal Rule of Civil Procedure 4(m) required service within ninety days after the action began. The court determined that the deadline was August 16, 2019, and that neither Jay-Z nor Timbaland had been served by that date. Hines made one unsuccessful attempt to serve Jay-Z during the ninety-day period and did not allege any timely attempt to serve Timbaland. He also did not request an extension until after the deadline.
The court held that Hines had not shown good cause for a mandatory extension and declined to grant a discretionary extension. Although Jay-Z and Timbaland had actual notice and did not identify specific prejudice from an extension, the court found that Hines’s lack of diligence and failure to seek an extension on time weighed heavily against extending the deadline.
The court dismissed the claims against Jay-Z and Timbaland. Because Timbaland had not been validly served, the court also granted his motion to set aside the certificate of default.
Copyright Claim Against the Record Label Defendants
To plead copyright infringement, Hines had to allege both actual copying and substantial similarity between the protected parts of his song and the allegedly infringing works. The court held that the complaint did not identify which elements of “Help Me” were copied or which elements of “Paper Chase” and “Toe 2 Toe” were allegedly infringing. Its general statements that the newer songs contained a sample from “Help Me” were insufficient.
The court therefore granted the Record Label Defendants’ motions to dismiss for failure to state a claim. It rejected a separate argument that Hines had failed to identify the particular copyright registrations covering the allegedly copied material. The court held that the complaint sufficiently alleged ownership and registration and did not need to provide registration numbers at the pleading stage. Dismissal on that registration ground was denied.
Leave to Amend and Other Motions
Hines’s request for leave to amend was procedurally improper under the court’s individual practices because he both opposed the motions to dismiss and separately sought permission to amend. The court nevertheless declined to deny amendment on that basis alone.
The court granted Hines leave to amend, but conditioned that permission on his payment of the costs and attorney’s fees the Record Label Defendants incurred in filing and defending their motions to dismiss. The court denied Hines’s motion to supplement the record as moot because amendment was being permitted.
Disposition
Judge Oetken’s order states that the Record Label Defendants’ motions to dismiss were granted; Shawn Carter’s motion to dismiss for insufficient service was granted; and Timothy Mosley’s motion to set aside default and dismiss for insufficient service was granted. Hines’s motion for leave to amend was granted subject to payment of the specified costs and fees. Hines was directed to file an amended complaint within sixty days, and the order states that failure to do so would result in dismissal with prejudice.
Classification
This is a procedural order because the case was resolved through service-of-process rulings and Rule 12 motions addressing whether the claims were adequately pleaded, rather than a final decision on copyright liability.
Read the full 10-page opinion on CourtListener, the free public archive maintained by the Free Law Project.