‘Bad Girl’ defeats, decisively, infringement claim

When a Club Girl became a Bad Girl, a songwriter got in a delayed huff. But he and his lawyer ignored a fundamental aspect of copyright law, a legal point on which an appellate court just offered a pointed reminder: “co-authors of a joint work are each entitled to undivided ownership and the joint owner of a copyright cannot sue his co-owner for infringement.”

That’s why crooner Usher Raymond is sitting prettier than ever as his 2004 derivative hit, Bad Girl, has won a decisive victory over an attack on it, with a ruling from the the U.S. Court of Appeals for the Third Circuit. U.S. Chief Judge Theodore A. Mckee wrote the decision on behalf of the three-judge panel, which included U.S. Circuit Judges D. Michael Fisher and Joseph A. Greenaway Jr.

They not only sent packing Daniel V. Marino, a co-writer  of Club Girl, a tune from which Usher’s successful record was derived, they also upheld sanctions against his counsel. What happened?

A district court rebuke

Marino appealed a summary judgement against his case by U.S. District Judge Paul S. Diamond, who tossed his suit against Usher and 19 other co-defendants, including some major record labels. The defendants also included William Guice and Dante Barton, who assisted in creating Club Girl and held with him its copyright.

Marino claimed in his suit that he alone came up with the basic melody, chord progressions, and tempo, and somehow never credited received credit. But the lower court rejected his infringement claim, finding the tune to be a joint work and his co-writers duly entitled to license it. The court also ruled that Bad Girl did not infringe on Marino’s rights, because his collaborators had conveyed to Usher and his co-defendants a valid, non-exclusive license of their song so he could create his derivative tune.

Marino admitted to receiving $4,553 in royalties on the song from Barton in 2006. The appellate court, citing the district judge’s findings, noted that Marino never attempted to stop the release and distribution of Bad Girl, went so far as to take part in events promoting it, and “testified that he was excited at its commercial success.”

For these and other reasons, his infringement claims, especially in suing his co-writers and co-copyright holders were “so without merit as to be ‘absurd and contrary to law.’ ”

Reasonable fees, reductions

The district court ordered Marino to cough up $110,880 to Usher and his co-defendants. That’s far lower than the $1.1 million the lower court ordered him to pay the defendants for their costs and fees due to his “frivolous” suit against them. The court reduced that sum by 90% because Marino couldn’t pay it. The appellate court, snubbing Marino’s arguments about abusive judicial powers, said the lower court had not erred in its original levies nor in its reduction.

The appellate court, instead, jammed its opinion with reminders for attorneys about what can happen if they flout rules of professional responsibility.

Legal sanctions

Marino’s attorney appealed sanctions imposed on him by the district court for contacting an unrepresented defendant in the case. The lower court found that he made misrepresentations to Guice to persuade him to sign a sworn statement to aid Marion.

The appeals judges upheld $28,266.54 in sanctions against counsel, with Mckee writing that the attorney “acted both intentionally and unreasonably in his dealing with Guice and that [his] actions had no legitimate purpose.”