Brandon v. NPG Records, Inc.

Background

James M. Brandon alleged that “Girl 6,” performed by Prince for Spike Lee’s film of the same name, infringed his copyright in “Phone Sex.” Brandon alleged similarities involving the songs’ hooks, trumpet arrangements, and echo effects. The copyright registration at issue was initially registered for GOMAB DEMO, which included “Phone Sex,” and Brandon alleged that rights were later transferred to him. He also alleged that a supplemental application expanded the registration to cover the song’s melody, arrangement, and performance.

Brandon previously brought a copyright-infringement action in the Southern District of Florida concerning the same songs and registration. In that earlier proceeding, the Florida court dismissed the infringement claims under Federal Rule of Civil Procedure 12(b)(6), which allows dismissal when a complaint does not adequately state a legal claim. The Florida court held that the two-word phrase “phone sex” was not copyrightable and that the original registration did not cover the melody, arrangement, or performance. It also rejected Brandon’s argument that the supplemental application expanded the registration’s scope. The Florida court dismissed the case with prejudice, and the opinion states that Brandon did not appeal.

Issue Preclusion

The defendants argued that the current case was barred by collateral estoppel, also called issue preclusion. Issue preclusion prevents a party from relitigating an issue of law or fact that was fully and fairly litigated and decided in an earlier proceeding. The court applied the doctrine because the current case involved the same alleged infringement, the same songs, and the same copyright registration as the Florida litigation.

The court found that all four requirements for issue preclusion were met: the same issue was raised in both proceedings; the issue was actually litigated and decided in Florida; Brandon had a full and fair opportunity to litigate it; and the Florida court’s resolution of the issue was necessary to its final judgment. The court rejected Brandon’s argument that the Florida case had mainly ended because of service problems, noting that the Florida court had separately dismissed the claims against Elm and Warner Brothers after extensive briefing on the copyright issues. The court also rejected Brandon’s argument that the Florida court improperly resolved factual issues on a motion to dismiss, stating that the proper remedy for disagreement with that ruling was an appeal rather than a new lawsuit.

Ruling on the Motions to Dismiss

The court held that Brandon was precluded from relitigating whether “Girl 6” infringed the copyright in “Phone Sex.” It therefore granted the defendants’ Rule 12(b)(6) motions to dismiss. The court did not decide the defendants’ other arguments, including the Prince Defendants’ challenge to personal jurisdiction, because issue preclusion required dismissal of the copyright claim. The court dismissed the amended complaint with prejudice, denied Brandon leave to amend because amendment would be futile, entered judgment for the defendants, and closed the case.

Motions to Seal

The court separately ruled on requests to seal documents submitted during jurisdictional discovery and motion briefing. It granted the motions to seal Exhibits B, D, E, and G to the Sun Declaration. Those exhibits contained discussions and negotiations about financing, licensing, royalties, and lump-sum payments connected to the “Girl 6” soundtrack.

The court denied the motions to seal Exhibit H, which was an email exchange about whether Spike Lee recalled a particular meeting, and denied the requests concerning portions of the parties’ briefs. The court concluded that those materials did not reveal sufficiently specific confidential information to overcome the presumption of public access. The parties were directed to file unredacted copies of the documents that were not sealed.