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JUN
11
6 MOS

Beastie Boys Drop the Bomb in 'Paul's Boutique' Sampling Lawsuit

Attorneys for Michael Diamond and Adam Horovitz say that TufAmerica doesn't actually own the copyrights that it is suing on.

Beastie Boys black and white L
Phil Andelman
Beastie Boys

The Beastie Boys might be finished producing new music, but the hip-hop group isn't done with copyright law. Amazingly, Michael Diamond, Adam Horovitz and the late Adam Yauch appear poised to score their third big legal win this year.

Just last week, the Beastie Boys crushed Monster Energy at a jury trial, winning $1.7 million over the company's use of five of its songs in a video featured at a snowboarding competition. That success followed a lawsuit against toy company GoldieBlox, which agreed to pay up to $1 million to settle claims of using the Beasties' "Girls" in an advertisement.

And now, there's the matter of Paul's Boutique sampling, otherwise known as the lawsuit filed against the Beasties the day before Yauch died.

Last September, a judge declined to dismiss TufAmerica's complaint, finding that the Beasties' use of the Trouble Funk songs, "Say What" and "Let's Get Small," on the 1989 Paul's Boutique album was qualitatively and quantitatively significant. The case continues, but summary judgment motions delivered this week by the Beasties, Universal-Polygram and Capitol Records present a rather scorching argument of why the lawsuit is doomed.

EARLIER: New Countersuit in Beastie Boys vs. GoldieBlox as Universal Music Watches Closely 

TufAmerica is a rather litigious label, suing in the past over sampling done by LL Cool J, Frank Ocean and Jay Z. In this case, TufAmerica has targeted the Beasties' alleged infringement of songs made by Trouble Funk, an R&B and funk band that had modest success in the early 1980s. TufAmerica claims interest on Trouble Funk songs through a 1999 administrative agreement whereby the band's members agreed to let TufAmerica negotiate licenses and bring infringement actions on their behalf.

One huge problem: According to the summary judgment motions, Trouble Funk members signed agreements in 1984 with Island Records, an affiliate of Universal. The deals were affirmed again in 1989. As a result of the agreements, Island became the exclusive owner to Trouble Funk sound recordings. What's more, during depositions in this Paul's Boutique sampling lawsuit, Trouble Funk members James Avery and Tony Fisher are said to have admitted that the agreements were valid and signed.

"Since Island became the owner of the 'Let’s Get Small' and 'Say What' recordings in 1984, Mr. Reed and Mr. Fisher had no ability to convey any rights to TufAmerica in 1999, let alone exclusive rights sufficient to confer standing under the Copyright Act," states Universal's summary judgment motion (read here).

TufAmerica isn't merely suing over an infringement of the recordings, it is also suing over an infringement of the compositions underlying the recordings. But Universal aims to fatally wound this claim as well. Specifically, it points to "uncontroverted evidence" that, back in 1984, Avery and Fisher assigned their composition copyrights, and that after a series of further rights transfers, those copyrights for "Let's Get Small" and "Say What" ended up with Polygram International Publishing, the predecessor to the defendant.

As such, UMG-Polygram became a co-owner of the compositions, which the summary judgment motion notes means that "TufAmerica cannot pursue an infringement action against a co-owner of the copyrighted works at issue."

(The limitations of co-ownership under copyright law is a point that we addressed in TufAmerica's lawsuit earlier this year over Frank Ocean's "Super Rich Kids.")

The Beasties' own summary judgment motion (read here) echoes these points, plus adds word of more evidence produced in discovery.

If the judge needs further ammunition to shoot down the case, the Beasties say that Avery testified he didn't know about the 1999 TufAmerica/Trouble Funk agreement. Eventually, in 2012, Avery came to his own agreement with TufAmerica, but not without his other co-owners. The Beasties say these two deals can't be added up into one exclusive licensing agreement, and besides, says the hip-hop group, "Second Circuit precedent is clear that a bare assignment of the right to sue for copyright infringement to a disinterested party does not give rise to standing under the Copyright Act. Thus, Plaintiff lacks standing to bring its claims, and judgment should enter in the Beastie Boys Defendants' favor."

Paul's Boutique reportedly has some 300 samples on the acclaimed album. The case began as a provocative investigation into the sampling sins of hip-hop history, and offered the potential of shaping legal interpretation of fair use, but it could be dismissed for the simple reason that the plaintiff was the wrong kind of plaintiff. If Diamond and Horovitz prevail here, they will have achieved a copyright trifecta -- winning a settlement, winning on summary judgment and winning at trial. Not bad for retirement.

E-mail: Eriq.Gardner@THR.com
Twitter: @eriqgardner