This post will cover the decision of the Court of Appeals for the Ninth Circuit against an attorney representing Bappi Lahiri, for a bad faith and frivolous copyright infringement claim.
Ownership of the song ‘Thoda’
Lahiri composed a song titled ‘Thoda’ for the film ‘Jyoti’. Since by agreement, Indian law was to govern the copyright in the song, the ultimate copyright in the underlying work (the song, in this case) vested with the film’s producer, ‘Pramod Films‘. The owner of the work was thus Pramod Films and not Bappi Lahiri.
Our readers will be familiar with the decision in Indian Performing Right Society (“IPRS”) v. Indian Motion Pictures Association [A.I.R. 1977 S.C. 1443] which supports the above view, through its interpretation of the Act, which unfortunately, also forms part of Indian copyright law. (As a side-note, our readers might wish to read further on the issue of underlying works and ownership as contemplated by the proposed amendment to the Copyright Act here, here, and here).
The ‘False Designation’ Claim
In early 2002, Kornarens, on behalf of Bappi Lahiri filed a suit against “Dr. Dre” (the well-known hip-hop/rap artist and producer) his production company and the record label – Universal, Interscope Records and Aftermath Records for sampling bits of the song ‘Thoda’ (pardon the bilingual pun) without crediting Bappi Lahiri. Essentially, the suit was for a ‘false designation’ claim under the Lanham Act. It is important to note that no copyright infringement was actually claimed at this point in time.
The Copyright Infringement Claim
Three months after the above suit was instituted, the Supreme Court in another case, Dastar Corp. v. Twentieth Century Fox Film Corporation [537 U.S. 1099 (2003)] granted certiorari and ruled that the protection for ‘false designation’ under the Lanham Act extended only to ‘producers of tangible goods and not authors of ideas, concepts or communications embodied in goods‘. In view of the Indian copyright ownership system for underlying works, Bappi Lahiri’s claim stood extinguished.
Three months post the certiorari decision, but before the final ruling, the two following acts were witnessed:
- 1. Kornarens, on behalf of Lahiri registered a copyright in ‘Thoda’ with the United States Copyright Office.
- 2. Three weeks after the final ruling in Dastar, Kornarens amended Lahiri’s plaint to add a ‘Thoda’ copyright infringement claim.
Request for Summary Judgement by the Defendants
Since ‘Pramod Films’ had assigned the rights to ‘Saregama’, the latter filed a suit against the defendants for copyright infringement. However, Bappi Lahiri also asserted copyright over the same song and hence both were consolidated before the United States District Court for the Central District of California.
The defendants wanted the competing claims of copyright to be first decided by an Indian court, thus requesting a stay on the consolidated cases. Alternatively, they wanted a summary motion against Lahiri since he did not own copyright over the song ‘Thoda’, and his copyright infringement claim was thus baseless.
Mischaracterisation of Agreement by Attorney Kornarens
This is arguably where the ‘bad faith’ of the attorney first become evident. Kornarens submitted an agreement between Lahiri and Saregama claiming that it unequivocally resolved the copyright ownership dispute, thus dispensing with the need for consolidated cases in the district court. However, the agreement in fact, only stated that any damages recovered from the defendants from the copyright infringement suit, would be divided 30-70. The district court relied on this misrepresentation to deny the defendants summary motion against Lahiri, since the agreement purported to show a copyright ownership interest vesting in Lahiri, which in reality did not exist. Neither did the Court detail why the defendant’s contention that Saregama owned the copyright under Indian law should be rejected.
Renewal of Summary Motion
The defendants, understandably aggrieved by the erroneous decision, renewed their summary motion against Lahiri. After a thorough analysis, the Court reversed its decision and held that Lahiri did not have a copyright interest over the song ‘Thoda’ under Indian law. The district court also found a bad faith element in Kornarens’ pursuit of the copyright infringement claim and imposed sanctions amounting to more than $250,000 for multiplying the proceedings.
Attorney Kornarens appeal against the District Court ruling
Kornarens appealed the decision by raising the following contentions:
- He relied on an Indian expert in copyright law to come to the conclusion that Lahiri had a copyright interest over the song.
- Bappi Lahiri himself asserted that he owned the copyright over the song.
- The District Court abused its discretion by sanctioning him unreasonably for damages amounting to $258,206.04 .
The Court of Appeals rejected his contentions on the following grounds:
- Even a ‘cursory investigation‘ of the applicable Indian law would make it amply clear that Lahiri had no copyright interest over the song.
- The Indian legal position on this point is straightforward and the IPRS decision is in English, so there was no need to rely on expert advice from India of a questionable nature.
- The court also found that the Indian position was similar to the U.S position in cases of work for hire, where the music composer for a film score surrenders the copyright in the song to the producer of the film.
- Most importantly and regrettably however, Kornarens repeatedly misrepresented the decision in IPRS v. Indian Motion Pictures Association by presenting immaterial parts of a concurring opinion as the ratio of the case. He also misquoted another judgement by cunningly inserting the term ‘film company‘ in a quote from the judgement, although the case dealt explicitly with non-film music.
- Further, the history of the litigation, including his bad faith misrepresentation of the damages-sharing agreement as a copyright-ownership settlement agreement; his ploy of registering and amending the plaint post-Dastar; and also his attempt to have the judge hearing the case recuse himself so that a new judge unfamiliar with the history of the case would be appointed, proved that the Court did not abuse its discretion by sanctioning him.
- On the issue of quantum of damages, the Court arrived at the figure after excluding expenses for the dismissed ‘false designation’ claim and only included costs incurred in defending against Lahiri’s copyright infringement claim. Further, the Court employed an apportioned percentage method since it would be impossible to determine with mathematical precision the fees and costs generated only by Kornarens and not Saregama. The district court further excluded fees incurred because of court-requested supplemental information and adjusted billable hours of attorneys accordingly for redundant work.
Thus, the Court of Appeals found a pattern of bad faith litigation on the part of Bappi Lahiri’s attorney, Anthony Kornarens, resulting in multiple proceedings, which were excessive and unnecessary and motivated by unsubstantiated claims. There was ample evidence of recklessness on his part, and despite the fact that the Court’s disciplinary power must be exercised with caution, this is a good example of when such power must be used. The ruling serves as a useful reminder that attorneys in their quest for recognition and a desire to succeed, occasionally transgress ethical boundaries. The message from the Ninth Circuit appears to be clear – constrain yourself or be prepared to dish out $250,000.