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IP Law Daily, COPYRIGHT—M.D.N.C.: Live performances before copyright registration preclude statutory damages for later album release, (Sep 15, 2022)

Law Firms Mentioned:Collum & Perry, PLLC
Organizations Mentioned:Matador Records, Inc. | Wyatt Early Harris Wheeler, LLP

By Matthew Hersh, J.D.

Because the album release followed naturally from the earlier live performances, the alleged infringement therefore “commenced” prior to the registration.

A songwriter who alleged that his song was purloined by a prominent Nigerien music ...

By Matthew Hersh, J.D.

Because the album release followed naturally from the earlier live performances, the alleged infringement therefore “commenced” prior to the registration.

A songwriter who alleged that his song was purloined by a prominent Nigerien musician was not entitled to statutory damages and attorney fees because the alleged infringement commenced at the time that the musician began performing the song live and not when he later released it on a studio album, the federal court for Winston-Salem, North Carolina, has held. The court, in granting partial judgment on the pleadings to the defending musician, found that because the live performances began before the allegedly infringing work was registered, statutory damages and attorney fees were precluded even for the post-registration album release (Karzo v. Matador Records, Inc., September 14, 2022, Biggs, L.).

The lawsuit involves two musicians of the Tuareg tradition from the West African country of Niger. Mahamadou Souleymane, known professionally as Mdou Moctar, is an internationally recognized singer who has toured the United States and Europe this year. He released his sixth album, Afrique Victime, in 2021. The seven-minute title track to that album, described in a review as “a song of mourning and a rallying cry,” recalls the legacy of atrocities committed by French occupying armies in Sub-Saharan Africa at the close of the 19th century.

The album release drew the attention of another Nigerien musician, Mohamed Alassane Karzo. He believed that Afrique Victime was an “exact copy”—allegedly including the same chorus, guitar parts, and chord structure—of a song he had written over a decade earlier entitled Mafelawen. He sued for copyright infringement, seeking injunctive relief, statutory damages, and attorney’s fees, and also brought a claim under the North Carolina Unfair and Deceptive Trade Practices Act.

The defending musician moved for judgment on the pleadings as to attorney fees and statutory damages, leading to this opinion.

Commencement of infringement. The court granted the motion, thus barring the songwriter from seeking attorney fees or statutory damages as part of this copyright claim. Under Section 412 of the Copyright Act, no claim for attorney fees or statutory damages may be brought if the alleged infringement has “commenced” prior to the time of registration. In this case, the studio album was released after the infringement, but the song had been performed live for many years prior to the registration. Did all of this infringement therefore commence prior to the registration? The court said Yes.

The infringement commenced prior to the registration, the court held, because the studio album could effectively be traced back to the earlier live performances. In the only Fourth Circuit case to discuss this issue, Bouchat v. Bon-Ton Dep’t Stores, Inc., 506 F.3d 315 (4th Cir. 2007), the court held that where a football team authorized third parties to sell merchandise with an infringing logo prior to the logo’s registration, but those third parties did not actually begin their sales until after registration, the infringing activity effectively commenced prior to registration—thus precluding statutory damages and attorney fees for all activities—because the later sales could be traced back to the pre-registration activity. So too here, the court held. The formal recording of a song for purposes of an album is fairly traceable to the initial making and performance of that same song,” the court held, “since absent such performances, the album may never have come into existence.”

The Case is No. 1:21-cv-00667-LCB-LPA.

Attorneys: Micheal Shane Perry (Collum & Perry, PLLC) for Mohamed Alassane Karzo. Donavan J. Hylarides (Wyatt Early Harris Wheeler, LLP) for Matador Records, Inc.

Companies: Matador Records, Inc.

Cases: Copyright NorthCarolinaNews