Daboub v. Gibbons

United States Court of Appeals,

Fifth Circuit.

No. 94-10129.

Mario A. DABOUB, d/b/a The Nightcaps, et al., Plaintiffs-
Appellants,

v.

William Frederick GIBBONS, et al., Defendants-Appellees.

Jan. 12, 1995.

Appeal from the United States District Court for the Northern
District of Texas.

Before POLITZ, Chief Judge, GOLDBERG and DUHÉ, Circuit Judges.

GOLDBERG, Circuit Judge:

Imitation may be the sincerest form of flattery, but it may

also lead to jealousy when the imitator succeeds where the imitated

does not. In this case, the object of imitation is a rock and roll

song.

I.

The appellants, members of the rock and roll band the

Nightcaps, claim that the appellees, members of the rock and roll

band ZZ Top, are copycats and stole the song Thunderbird from them.

The Nightcaps allege a number of state and federal law violations

based on ZZ Top's version of Thunderbird. Before addressing these

legal theories, we present a brief description of the cast of the

contestants in this battle of the bands.

The members of the Nightcaps formed the band in the 1950's

when they were teenagers. The band recorded and released

Thunderbird as a single and on an LP entitled Wine, Wine, Wine.

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The Nightcaps performed the song and distributed the album, but

never applied for a copyright. Apparently the song and the album

did not shower the Nightcaps with fame and fortune, and the band

broke up in the 1960's.

ZZ Top, in contrast, is currently a very successful band. The

group, originally formed in 1969, also recorded and released a song

entitled Thunderbird. ZZ Top's version of Thunderbird can be heard

on its 1975 album Fandango!, its compilation set, and in concert.

ZZ Top obtained a copyright on the song in 1975.

ZZ Top concedes, for the purposes of this appeal, that its

version of the song Thunderbird is musically and lyrically

identical to the version originally written and performed by the

Nightcaps.1

II.

After the pleadings had been filed, the district court

referred the case to a magistrate. The magistrate found that the

Nightcaps' state and federal claims were either preempted by the

Federal Copyright Statute, 17 U.S.C. § 101, et seq., (the

"Copyright Act"), or were barred by the applicable statutes of

limitations. The magistrate issued a report which recommended that

the Nightcaps' complaint be dismissed, or alternatively, that

summary judgment be granted in ZZ Top's favor. The district court

adopted the magistrate's report and recommendations, and granted

summary judgment to ZZ Top. The Nightcaps appeal to this court.

1
This concession is in tune with our review of the record on
appeal, which includes a tape recording of performances of the
song by both bands.

2
 The Nightcaps versify arguments urging us to reverse the

district court's grant of summary judgment. They assert that

summary judgment was improperly granted because they were not

permitted adequate discovery. Second, the Nightcaps insist that

the district court improperly determined that the federal copyright

law preempted their state law causes of action. Finally, the

Nightcaps argue that the relevant statutes of limitations do not

silence the melodies of their claims.

III.

The Nightcaps claim that they were denied sufficient

discovery, and that therefore the district court prematurely

considered ZZ Top's summary judgment motion. However, the

Nightcaps have failed to specifically state what information they

seek to obtain through discovery and how discovery would help their

case. ZZ Top has accepted all of the Nightcaps' factual

allegations for purposes of the motions to dismiss and for summary

judgment. The record does not indicate that the district court was

overly parsimonious in allowing time for discovery, and we cannot

even find any bait for the Nightcaps to conduct a fishing

expedition. The Nightcaps' simple request for additional time to

compose additional discovery is not sufficient to meet the burden

of articulating specific facts establishing a genuine dispute for

trial. See Matsushita Electric Industrial Co. v. Zenith Radio

Corp., 475 U.S. 574, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986);

Leatherman v. Tarrant County Narcotics Intelligence & Coordination

Unit, 28 F.3d 1388 (5th Cir.1994); Nowlin v. Resolution Trust Co.,

3
33 F.3d 498 (5th Cir.1994). Therefore, the Nightcaps' silence as

far as naming what they are looking for through discovery is fatal

to their argument, and the district court's decision to rule on the

summary judgment motion was proper.

IV.

The Nightcaps sing a chorus of state and federal law theories

in their attempt to escape the grasp of the Copyright Act's

preemption provision, 17 U.S.C. § 301(a). The Copyright Act

expressly preempts all causes of action falling within its scope,

with a few exceptions. The Nightcaps' arguments against preemption

fall into two categories. First, the Nightcaps argue that a

statutory exception to the preemption provision applies to their

claims. Second, the Nightcaps argue that their causes of action

are not "equivalent" to a cause of action under the Copyright Act,

and therefore § 301(a) does not apply.

The Nightcaps argue that the exception found in § 301(c)2

applies to this case, because Thunderbird is a "sound recording"

that was "fixed" prior to 1972. ZZ Top argues, and the lower court

held, that the exception does not apply to the case at bar.

Section 301(c) was intended to apply to "pirated" recordings

of performances, rather than to the lyrics alone. One commentator

analyzing the exception stated:

2
That provision states, in part:

With respect to sound recordings fixed before February
15, 1972, any rights or remedies under the common law
or statutes of any State shall not be annulled or
limited by this title until February 15, 2047....

4
 The distinction may be summed up as the difference between a
copyright in a Cole Porter song and a copyright in Frank
Sinatra's performance of that song. The former would be a
musical work copyright and the latter would be a sound
recording copyright, although both may be embodied in the same
phonorecord.

1 M. Nimmer, Copyright § 4.06, p. 4-34 n. 1. See also Jarvis v. A

& M Records, 827 F.Supp. 282, 292 (D.N.J.1993). In the case before

us, the Nightcaps do not allege that ZZ Top presented a recorded

version of the Nightcaps' rendition of Thunderbird as if it were

performed by ZZ Top. Instead, the Nightcaps simply claim that ZZ

Top wrongfully took the words of the song and recorded its own

version.3 In Nimmer's analogy, the Nightcaps are like Cole Porter,

not Frank Sinatra. Thus, the § 301(c) exception does not apply to

this case.

The next verse of the Nightcaps' argument is that § 301(a)

does not preempt the Nightcaps' suggested causes of action.

Section 301(a) accomplishes the general federal policy of creating

a uniform method for protecting and enforcing certain rights in

intellectual property by preempting other claims.4 The courts have

3
Even though this court is not comprised of music critics,
we conclude upon a review of the recordings in the record that no
reasonable audience would mistake ZZ Top's performance of
Thunderbird for that of the Nightcaps.
4
That section provides that:

(a) On and after January 1, 1978, all legal and
equitable rights that are equivalent to any of the
exclusive rights within the general scope of copyright
as specified by section 106 in works of authorship that
are fixed in a tangible medium of expression and come
within the subject matter of copyright as specified by
sections 102 and 103, whether created before or after
that date and whether published or unpublished, are
governed exclusively by this title. Thereafter, no

5
interpreted the provision to contain a two-step test. First, the

cause of action is examined to determine if it falls "within the

subject matter of copyright." Second, the cause of action is

examined to determine if it protects rights that are "equivalent"

to any of the exclusive rights of a federal copyright, as provided

in 17 U.S.C. § 106. Gemcraft Homes, Inc. v. Sumurdy, 688 F.Supp.

289, 294 (E.D.Tex.1988) (citing Crow v. Wainwright, 720 F.2d 1224,

1226 (11th Cir.1983), cert. denied, 469 U.S. 819, 105 S.Ct. 89, 83

L.Ed.2d 35 (1984)). Section 106 grants the holder of a copyright

the exclusive right to reproduce, distribute, perform, and display

the copyrighted work.5

person is entitled to any such right or equivalent
right in any such work under the common law or statutes
of any state.
5
Section 106 provides that:

Subject to sections 107 through 120, the owner of
copyright under this title has the exclusive right to
do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or
phonorecords;

(2) to prepare derivative works based upon the
copyrighted work;

(3) to distribute copies or phonorecords of the
copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease or
lending;

(4) in the case of literary, musical, dramatic,
and choreographic works, pantomimes, and motion
pictures and other audiovisual works, to perform
the copyrighted work publicly; and

(5) in the case of literary, musical, dramatic,
and choreographic works, pantomimes, and
pictorial, graphic, or sculptural works, including

6
 The Nightcaps' argument focuses on the "equivalency" step.6

The Nightcaps attempt to demonstrate how their state law claims are

not "equivalent" to a cause of action under the Copyright Act by

focussing on the specific elements of the causes of action they

allege. ZZ Top argues, and the district court held, that these

state law causes of action are "equivalent" to the exclusive rights

contained in the Copyright Act, and therefore these causes of

action are preempted.

The Nightcaps primarily rely on G.S. Rasmussen & Assoc., Inc.

v. Kalitta Flying Service, 958 F.2d 896 (9th Cir.1992), cert.

denied, --- U.S. ----, 113 S.Ct. 2927, 124 L.Ed.2d 678 (1993), to

support their interpretation of the equivalency step and their

contention that their state law claims are not preempted. However,

that case is distinguishable from the case at hand. In G.S.

Rasmussen, the court held that the Copyright Act did not preempt

the plaintiff's claims, because those claims addressed interests

that were not equivalent to interests protected by the Copyright

Act. Id. at 904. The plaintiff in that case complained about the

use of copyrighted material in order to obtain a regulatory permit.

Id. The plaintiff was not simply complaining about the improper

the individual images of a motion picture or other
audiovisual work, to display the copyrighted work
publicly.
6
The Nightcaps do not argue with the conclusion that the
first step of the test is satisfied in this case. This
assumption is appropriate. Del Madera Properties v. Rhodes and
Gardner, Ind., 820 F.2d 973, 976 (9th Cir.1987); Gemcraft Homes,
688 F.Supp. at 294; Motown Record Corp. v. George A. Hormel &
Co., 657 F.Supp. 1236, 1239 (C.D.Cal.1987).

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copying of the copyrighted material. G.S. Rasmussen is

distinguishable from the case before us, because the Nightcaps'

state claims center on the improper copying of the song, an

interest clearly protected by the Copyright Act. The Nightcaps'

state law claims include conversion, misappropriation, plagiarism,

a violation of the Texas Free Enterprise and Antitrust Act of 1983,

disparagement, and defamation. The core of each of these state law

theories of recovery in this case, without detailing the specific

elements comprising each claim, is the same: the wrongful copying,

distribution, and performance of the lyrics of Thunderbird. The

similitude of tunes with respect to the state and copyright causes

of action is a most harmonious one. The Nightcaps have failed to

allege or produce evidence of "any element, such as an invasion of

personal rights or a breach of fiduciary duty, which render [their

claims] different in kind from copyright infringement." P.I.T.S.

Films v. Laconis, 588 F.Supp. 1383 (E.D.Mich.1984). As another

court stated:

"The elements in plaintiff's [state law action] involve
elements that would not establish qualitatively different
conduct by the defendants than the elements for an action
under the Copyright Act. Thus, there is equivalence between
the state and federal rights."

Quincy Cablesystems Inc. v. Sully's Bar, Inc., 650 F.Supp. 838, 850

(D.Mass.1986). Finding no disharmony between the elements of the

state law claims and the federal law in this case, we have no

hesitancy in pronouncing enough equivalency to satisfy § 301(a).7

7
See also Jarvis v. A & M Records, 827 F.Supp. 282, 297-99
(D.N.J.1993) (holding that state law claims were preempted by §
301)

8
In effect, the Nightcaps have attempted to avoid the Copyright Act

by presenting as many state law causes of action to the court as

possible. The Nightcaps' argument is like a ventriloquist's

attempt to present a copyright action in the voice of state law

claims. However, if the language of the act could be so easily

circumvented, the preemption provision would be useless, and the

policies behind a uniform Copyright statute would be silenced.8

V.

All of the Nightcaps' arguments confront a formidable hurdle

in the form of statutes of limitations. ZZ Top obtained a

copyright for Thunderbird in 1975, when the band released

Fandango!, and the band has publicly performed the song ever since.

The Nightcaps filed their complaint against ZZ Top in December,

1992. The state law limitations period for some of the alleged

causes of action, such as misappropriation, unfair competition, and

conversion, is two years. Tex.Civ.Prac. & Rem.Code § 16.003; see

e.g., In re Placid Oil Co., 932 F.2d 394, 398 (5th Cir.1991);

Coastal Distributing Co. v. NGK Spark Plug Co., 779 F.2d 1033 (5th

Cir.1986). The limitations period for fraud is four years.

8
See Notes of Committee on the Judiciary, House Report No.
94-1476, U.S.Code Cong. & Admin.News 1976, 5659, 5746.
"Preemption of State Law. The intention of section 301 is to
preempt and abolish any rights under the common law or statutes
of a State that are equivalent to copyright and that extend to
works coming within the scope of the Federal copyright law. The
declaration of this principle in section 301 is intended to be
stated in the clearest and most unequivocal language possible, so
as to foreclose any conceivable misinterpretation of its
unqualified intention that Congress shall act preemptively, and
to avoid the development of any vague borderline areas between
State and Federal protection." (emphasis supplied).

9
Tex.Civ.Prac. & Rem.Code § 16.004; Williams v. Khalaf, 802 S.W.2d

651 (Tex.1990). Under either limitations period, the claims are

time barred, as the underlying alleged wrongful act took place in

1975, when ZZ Top acquired a copyright and property interest in the

song. See Mention v. Gessell, 714 F.2d 87 (9th Cir.1983) (holding

that statute of limitations barred common law causes of action for

copying).

The Nightcaps present two arguments to overcome this

conclusion. First, the Nightcaps argue that ZZ Top's actions

amount to a continuing tort, and therefore "the statute of

limitations has not even begun to run." Second, the Nightcaps

argue that the discovery rule should toll the statute of

limitations until each member of the band "discovers, or in the

exercise of reasonable diligence should have discovered the facts

establishing the cause of action and the nature of the injury." ZZ

Top argues that neither the doctrine of continuing tort nor the

discovery rule applies in this case.

The Nightcaps' continuing tort argument is based on an

expansive reading of the alleged tortious activity. The Nightcaps

claim that each time ZZ Top sold an album containing Thunderbird,

or performed the song, and every time the song was broadcast, ZZ

Top took another step in its tortious behavior. The Nightcaps

claim that music, unlike tangible property, can be converted over

and over again. The case the Nightcaps primarily rely upon for

applying the continuing tort theory is distinguishable on both its

factual and legal basis. Twyman v. Twyman, 855 S.W.2d 619

10
(Tex.1993) (action for negligent infliction of emotional distress

based on husband's attempts to have wife engage in bondage did not

accrue until husband's attempts ceased). The continuing tort

theory has been rejected or not even mentioned in cases involving

similar situations to the case at hand. See e.g., Sporn v. MCA

Records, Inc., 58 N.Y.2d 482, 462 N.Y.S.2d 413, 448 N.E.2d 1324

(1983) (rejecting the notion of a "continuing trespass"); Gee v.

CBS, Inc., 471 F.Supp. 600 (E.D.Pa.1979), aff'd, 612 F.2d 572 (3d

Cir.1971). The Gee case concerned recordings of Bessie Smith, the

"Empress of the Blues." In Gee, the defendant released copies of

Smith's recordings at several intervals, including in 1951 and

1970-72. The district court issued a thorough, intensive opinion

which examined statute of limitations defenses, copyright, and

state claims. The court held that all of the plaintiffs claims

were either barred by the applicable statute of limitations or

otherwise fatally flawed. The Gee court did not mention a

continuing tort theory in its expansive opinion.

The Nightcaps' observations and argument appropriately

elucidates a concept of continuing damages, rather than a

continuing tort.9 Each time ZZ Top sells a single of Thunderbird,

the Nightcaps damages may increase, but the tort was committed when

ZZ Top copyrighted the song. Application of a continuing tort

9
Cf. Frank Music Corp. v. Metro-Goldwyn-Mayer, Inc., 772
F.2d 505, 512-15 (9th Cir.1985), cert. denied, Metro-Goldwyn-
Mayer, Inc. v. Frank Music Corp., 494 U.S. 1017, 110 S.Ct. 1321,
108 L.Ed.2d 496 (1990); Gaste v. Kaiserman, 863 F.2d 1061, 1069
(2d Cir.1988); Jarvis v. A & M Records, 827 F.Supp. 282, 293-94
(D.N.J.1993).

11
theory would go so far as to frustrate the policy behind the

copyright statute. If the continuing tort theory were applied to

cases involving musical recordings, then the statute of limitations

would never apply to these cases. If the song were played once on

the radio, or someone bought a copy of a recording at a store the

day before trial, the case would be brought within the statute of

limitations and the tort resurrected. But in this case, the waltz

was over by the time the Nightcaps filed suit.

Finally, the Nightcaps argue that the discovery rule should

be applied in this case and that the statutes of limitations should

be tolled until each of the individual members of the Nightcaps

obtained actual knowledge, or through reasonable diligence could

have obtained actual knowledge, of ZZ Top's conduct. We note that

the discovery rule is not applied in several of the causes of

action presented by the Nightcaps.10 With regard to the remaining

causes of action, including the RICO claim, even if the discovery

rule did apply, we agree with the district court that those causes

of action are barred by the limitations. First, the Copyright Act

expressly provides that "[r]ecordation of a document in the

Copyright Office gives all persons constructive notice of the facts

stated" in a properly registered document. 17 U.S.C. § 205(c).

10
The discovery rule is not applied in the contexts of
conversion (Pierson v. GFH Financial Services Corp., 829 S.W.2d
311, 314 (Tex.Ct.App.—Austin 1992, no writ )); misappropriation
(Coastal Distributing Co. v. NGK Spark Plug Co., 779 F.2d 1033
(5th Cir.1986)); or unfair competition (Coastal, 779 F.2d at
1035-36). It seems to apply in RICO actions. La Porte Constr.
Co., Inc. v. Bayshore Nat. Bank, 805 F.2d 1254, 1256 (5th
Cir.1986).

12
Second, several members of the Nightcaps admitted that they knew

about ZZ Top's version of Thunderbird in 1981. ZZ Top's actions

were not covert or concealed. Indeed, many copies of Fandango!

were released and ZZ Top performed the song publicly. The

Nightcaps either knew, or through reasonable diligence should have

known, about ZZ Top's actions more than four years before they

brought this suit in 1992. Therefore, even if the Nightcaps causes

of action survived the preemption provision of the Copyright Act,

they were extinguished by the limitations period.

VI.

For the above reasons, the judgment of the district court is

AFFIRMED.

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