Brunson v. Capitol CMG, Inc.

IN THE UNITED STATES DISTRICT COURT FOR THE

MIDDLE DISTRICT OF TENNESSEE

NASHVILLE DIVISION

LISA BRUNSON, )

)

Plaintiff/Counter-Defendant, )

) NO. 3:20-cv-01056

v. ) JUDGE RICHARDSON

)

CAPITOL CMG, INC., et al., )

)

Defendants/Counter-Plaintiffs. )

)

)

MEMORANDUM OPINION

Pending before the Court is a “Partial Motion to Dismiss and to Strike” (Doc. No. 71,

“Motion”), filed by Lisa Brunson, and supported by an accompanying Memorandum of Law (Doc.

No. 72, “Brunson’s Memorandum”). Capitol CMG, Inc. (“CCMG”) and David Cook (doing

business as “Integrity Music,” the name the Court will use herein) filed a response (Doc. No. 82),

and Brunson filed a reply (Doc. No. 87).

For the reasons stated herein, the Motion will be GRANTED in part and DENIED in part.

FACTUAL BACKGROUND1

CCMG and Integrity Music (collectively “the Publishers”), are music publishers and music

publishing administrators who own music copyrights in many popular worship and Christian

musical compositions. (Doc. No. 66 at 18). Lisa Brunson, is a congregational worship leader,

music director and singer/songwriter. (Id.)

1 The facts in this section are, except as otherwise indicated, taken from the Counter-Complaint filed by

Integrity Music (Doc. No. 66), and are accepted as true for the purposes of the instant Motion. There is a

virtually identical Counter-Complaint filed by CCMG (Doc. No. 67), but the Court will include only

citations to Integrity Music’s Counter-Complaint.

At all relevant times herein, Integrity Music administered the copyright in “Way Maker,”2

a song first written and sung by Osinachi Kalu Okoro Egbu (“Sinach”). (Id. at 18, 20). “Way

Maker” is registered with the United States Copyright Office under PA0002211512 and

PA0002254989. (Id. at 20). From July 1, 2011 to July 1, 2021, CCMG exclusively administered

Integrity’s interest in “Way Maker” pursuant to a written administration agreement between the

two entities. (Id.). In June 2017, more than a year after Sinach debuted the song, Brunson

incorporated a composition of hers3 into “Way Maker,” by removing the original bridge and

inserting “her work” in its place. (Id. at 20). Since June 2017, Brunson has performed “Way

Maker” (with her modifications), and that performance has more than 1.8 million views on

YouTube. (Id.).

Additionally, Brunson registered her composition4 with the Copyright Office, receiving

registration PAU004024415. (Id.). The deposit copy5 Brunson submitted in response to a challenge

from a Copyright Office examiner removed the measure notation of “56”, which was in the original

2 The Counter-Complaints do not describe the roles of Integrity Music as copyright administrator, but the

Court gathers that this typically would include responsibilities such as reviewing requests to use the

copyrighted material, preparing and executing license agreements as to the copyrighted material,

negotiating license fees, preparing license agreements, monitoring third-party usage and copyrighted

material, and responding to questions related to the copyrighted material.

3 “Her work” is the term (with quotation marks included) for this composition by the Publishers in the

Counter-Complaints. By “her work,” the Publishers are referring to what the Publishers note was

“identified” by Brunson in paragraph 12 of her Complaint. (Doc. No. 66 at 20). Brunson, for her part, had

called this “Plaintiff’s Copyrighted Work” in paragraph 12 in her Complaint and identified it therein by

including a copy of its musical score. (Doc. No. 1 at 3-4). For her part, Brunson (in paragraph 14 of her

Complaint) alleged what she had done with “Plaintiff’s Copyrighted Work”—namely, she took out the

“bridge” of “Waymaker” and inserted her work in its place. (Id. at 4).

4 The Court hereafter refers to Brunson’s composition—“Plaintiff’s Copyrighted Work” (or, in the

Publishers’ parlance, “her work”)—as “Brunson’s work.”

5 When applying for a copyright registration, the application must include a copy (or copies) of the work

for which registration is sought. 17 U.S.C. § 408(b). Such a copy is known as a deposit copy.

deposit copy and had indicated that Brunson’s work was part of a larger work. (Id. at 21).

Specifically, the measure notation indicated that Brunson’s work had replaced the original fifty-

sixth measure of “Way Maker.”6 (Id. at 21).

PROCEDURAL BACKGROUND

Brunson, who is the Plaintiff (and Counter-Defendant) in this action, filed the present case

on December 9, 2020, alleging various claims of copyright infringement against Defendants

Sinach, Integrity Music, and CCMG. (Doc. No. 1). On October 27, 2021, the Publishers (CCMG

and Integrity Music) then filed counterclaims against Brunson, alleging their own claims of

copyright infringement and fraud on the copyright office. (Doc. Nos. 66 and 67). Brunson, as

Counter-Defendant, then filed this Motion, whereby Brunson primarily seeks dismissal of the

counterclaims under Rule 12(b)(6), arguing that the Publishers’ claim7 of copyright infringement

is barred by the statute of limitations and that the claim for fraud on the copyright office fails to

state a claim upon which relief can be granted. (Id. at 2). In the Motion, Brunson also seeks to

strike some of the affirmative defenses asserted by the three Defendants (the two Publishers and

Sinach) in their respective Answers (Doc. Nos. 66, 67, and 68).

LEGAL STANDARD

6 The undersigned could be missing something, but it appears to him that perhaps the Publishers’ allegation

here would have been more precise had it been to the effect that Brunson’s work replaced a series of

measures in “Way Maker” beginning at the original 56th measure of “Way Maker.” At least as the

undersigned understands the notion of a “measure” in a musical score, paragraph 12 of the Complaint

indicates that Brunson’s work comprises numerous measures and that they are numbered 56 through 66.

(Doc. No. 1 at 4). This of course suggests that Brunson’s work replaced the original 56th through 66th

measures of “Way Maker.”

7 In their respective Counter-Complaints, each of the (two) Publishers brought a copyright-infringement

claim, each virtually identical to the other; each of the Publishers also brought a fraud-on -the-copyright-

office claim, each virtually identical to the other. For ease of reference, the Court will use the term “claim”

(in the singular) to refer collectively to the Publishers’ copyright infringement claims, and the Court will

do likewise with respect to the Publishers’ fraud-on -the-copyright-office claims

I. Rule 12(b)(6) Motion

For purposes of a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the Court must take all

of the factual allegations in the complaint as true. Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). To

survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true,

to state a claim to relief that is plausible on its face. Id. A claim has facial plausibility when the

plaintiff pleads factual content that allows the court to draw the reasonable inference that the

defendant is liable for the misconduct alleged. Id. Threadbare recitals of the elements of a cause

of action, supported by mere conclusory statements, do not suffice. Id. When there are well-

pleaded factual allegations, a court should assume their veracity and then determine whether they

plausibly give rise to an entitlement to relief. Id. at 679. A legal conclusion, including one couched

as a factual allegation, need not be accepted as true on a motion to dismiss, nor are mere recitations

of the elements of a cause of action sufficient. Id.; Fritz v. Charter Twp. of Comstock, 592 F.3d

718, 722 (6th Cir. 2010), cited in Abriq v. Hall, 295 F. Supp. 3d 874, 877 (M.D. Tenn. 2018).

Moreover, factual allegations that are merely consistent with the defendant’s liability do not satisfy

the claimant’s burden, as mere consistency does not establish plausibility of entitlement to relief

even if it supports the possibility of relief. Iqbal, 556 U.S. at 678.

In determining whether a complaint is sufficient under the standards of Iqbal and its

predecessor and complementary case, Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), it may be

appropriate to “begin [the] analysis by identifying the allegations in the complaint that are not

entitled to the assumption of truth.” Iqbal, 556 U.S. at 680. This can be crucial, as no such

allegations count toward the plaintiff’s goal of reaching plausibility of relief. To reiterate, such

allegations include “bare assertions,” formulaic recitation of the elements, and “conclusory” or

“bold” allegations. Id. at 681. The question is whether the remaining allegations—factual

allegations, i.e., allegations of factual matter—plausibly suggest an entitlement to relief. Id. If not,

the pleading fails to meet the standard of Federal Rule of Civil Procedure 8 and thus must be

dismissed pursuant to Rule 12(b)(6). Id. at 683.

As a general rule, matters outside the pleadings may not be considered in ruling on a motion

to dismiss under Rule 12(b)(6) unless the motion is converted to one for summary judgment under

Rule 56. Fed. R. Civ. P. 12(d). When a document is referred to in the pleadings and is integral to

the claims, it may be considered without converting a motion to dismiss into one for summary

judgment. Doe v. Ohio State Univ., 219 F.Supp.3d 645, 652-53 (S.D. Ohio 2016); Blanch v. Trans

Union, LLC, 333 F. Supp. 3d 789, 791-92 (M.D. Tenn. 2018).

On a Rule 12(b)(6) motion to dismiss, “[t]he moving party has the burden of proving that

no claim exists.” Total Benefits Plan. Agency, Inc. v. Anthem Blue Cross and Blue Shield, 552 F.3d

430, 433 (6th Cir.2008). That is not to say that the movant has some evidentiary burden; as should

be clear from the discussion above, evidence (as opposed to allegations as construed in light of

any allowable matters outside the pleadings) is not involved on a Rule 12(b)(6) motion. The

movant’s burden, rather, is a burden of explanation; since the movant is the one seeking dismissal,

it is the one that bears the burden of explaining—with whatever degree of thoroughness is required

under the circumstances—why dismissal is appropriate for failure to state a claim.

II. Rule 12(f) Motion to Strike Affirmative Defenses

Fed. R. Civ. P. 12(f) states that a Court “may strike from a pleading an insufficient defense

or any redundant, immaterial, impertinent, or scandalous matter.” A motion to strike “is the

primary procedure for objecting to an insufficient defense.” Regions Bank v. SoFHA Real Estate,

Inc., No. 2:09–CV–57, 2010 WL 3341869, at *12 (E.D. Tenn. Aug. 25, 2010) (citing 5C CHARLES

ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE & PROCEDURE § 1380 (3d ed. 1998)).

Typically, “[a]n affirmative defense may be pleaded in general terms and will be held to be

sufficient ... as long as it gives plaintiff fair notice of the nature of the defense.” Lawrence v.

Chabot, 182 Fed. Appx. 442, 456 (6th Cir. 2006) (internal quotations omitted).

In the Sixth Circuit, “[m]otions to strike are viewed with disfavor and are not frequently

granted.” Operating Engineers Loc. 324 Health Care Plan v. G & W Const. Co., 783 F.3d 1045,

1050 (6th Cir. 2015) (citing Brown & Williamson Tobacco Corp. v. United States, 201 F.2d 819,

822 (6th Cir. 1953)).

DISCUSSION

I. The Publishers’ copyright-infringement claim is not time-barred.

Brunson first argues that the Publishers’ claim for copyright infringement is barred by the

statute of limitations. (Doc. No. 72 at 4). Aptly quoting 17 U.S.C. § 507(b), Brunson notes that the

Copyright Act, 17 U.S.C. § 1 et seq., establishes a limitations period of three years, and that her

allegedly derivative work was created in June 2017, more than three years before the Publishers

filed their copyright infringement (counter-)claim in October of 2021. (Id. at 4-5).

The Publishers respond that “the discovery rule precludes dismissal” of their copyright-

infringement claim. (Doc. No. 82 at 10). The Publishers contend that they lacked knowledge of

Brunson’s (alleged) infringements of “Way Maker” in 2017, and that there is “at a minimum” a

question of fact as to the exact date of accrual of their copyright-infringement claim.8 (Id. at 11).

Brunson replies that the Publishers have failed to plead facts in their Counter-Complaint that

support their assertion of the discovery rule. (Doc. No. 87 at 2).

As the Sixth Circuit has previously explained,

8 The Publishers here speak of the date of “accru[al],” but in context it is clear that what they more precisely

mean is the date on which the limitations period began running, which (as noted below) is not necessarily

the same thing as the date of accrual.

When a statute does not speak to the issue, federal courts will generally

apply the discovery rule to toll the running of the statute of limitations until the

plaintiff discovers or should have discovered his or her injury. Rotella v. Wood, 528

U.S. 549, 555, 120 S. Ct. 1075, 145 L.Ed.2d 1047 (2000). The discovery rule is

applied when the plaintiff, “due to facts and circumstances not within his control,”

has no knowledge that an injury occurred. Univ. of Pittsburgh v. Townsend, 542

F.3d 513, 527 (6th Cir. 2008).

Guy v. Mercantile Bank Mortg. Co., 711 F. App'x 250, 252–53 (6th Cir. 2017).9 The Copyright

Act does not specify when the limitations period starts to run on an infringement claim, and

therefore the discovery rule applies and “[a] copyright-infringement claim ‘accrues when a

plaintiff knows of the potential violation or is chargeable with such knowledge.’” Roger Miller

Music, Inc. v. Sony/ATV Publ'g, LLC, 477 F.3d 383, 390 (6th Cir. 2007) (quoting Bridgeport

Music, Inc. v. Rhyme Syndicate Music, 376 F.3d 615, 621 (6th Cir. 2004)).10

9 Guy refers to “toll[ing]” the running of the limitations period. To understand what Guy is and is not saying,

therefore, it is worth recalling the undersigned’s observations from a quarter century ago:

The term “tolling” is used two different ways. First, “tolling” often refers to a

postponement of the date the statute begins to run, usually the accrual date. By contrast,

some courts use the term “tolling” to refer to suspending the running of the limitations

period after it already has begun to run. Some tolling provisions cannot be placed

comfortably in either tolling category, and some tolling provisions can either postpone the

starting of the clock or stop it after it begins running, depending upon the timing of the

event that triggers the tolling. Nevertheless, the distinction exists and is analytically

important.

Eli J. Richardson, Eliminating the Limitations of Limitations Law, 29 ARIZ. ST. L.J. 1015, 1039-40 (1997).

Guy clearly was referring to “tolling” in the former sense, i.e., the postponement of the date on which the

limitations period otherwise would begin to run. In other words, Guy explains that the discovery rule, when

applicable, serves to peg the start of the running of the limitations to a date later than it otherwise might be

were some rule other than the discovery rule applied to peg the start date—and Guy uses the word “toll” as

shorthand for describing how the discovery rule delays the start of the running of the limitations period. In

other words, the verb “toll” can mean multiple things, but Guy here uses it as a synonym for “delay” or

“postpone.”

10 The discussion here necessitates the making of an additional observation about terminology. As the

undersigned noted years ago, “[a] limitations period generally begins to run from the time the cause of

action ‘accrued.’” Eli J. Richardson, Eliminating the Limitations of Limitations Law, 29 ARIZ. ST. L.J. 1015,

1036 (1997). Yet, “the date of accrual is not necessarily synonymous with the date that the limitations

Generally, a plaintiff (or counter-plaintiff) is “not required to ‘anticipate and plead around

all potential defenses.’” Kensu v. Warden, No. 12–11877, 2013 WL 1774637, at *5 (E.D. Mich.

Apr. 25, 2013) (quoting Xechem, Inc. v. Bristol–Myers Squibb Co., 372 F.3d 899, 901 (7th Cir.

2004)). “Nonetheless, the Sixth Circuit has held that a plaintiff [or counter-plaintiff] may have an

obligation to plead tolling or facts in avoidance of the statute of limitations defense when it is

apparent from the face of the complaint that the time limit for bringing the claim has expired.”

Kensu v. Rapelje, No. 12-11877, 2013 WL 1774637, at *5 (E.D. Mich. Apr. 25, 2013). However,

when the discovery rule is the default rule for determining when a limitations period begins to run,

its applicability does not need to be established by the plaintiff as grounds for avoiding an

otherwise sound statute-of-limitations defense. The Sixth Circuit made this clear in Nat'l Credit

Union Admin. Bd. v. Jurcevic, 867 F.3d 616 (6th Cir. 2017), in which the court rejected defendant’s

argument that the plaintiff’s tort claims should be dismissed because the plaintiff failed to allege

period begins to run; the limitations period begins to run from the date of accrual only to the extent that

applicable law says so.” Id. “As it turns out, applicable law usually does say so; by judicial decision, by a

general statute relating to the running of limitations periods, or by language in the particular statute of

limitations itself, a statute’s limitations period usually runs from the date of accrual.” Id. at 1036-37. For

this reason, federal courts often equate the two dates, sometimes without explaining why the two are the

same (i.e., why, under applicable law, the date the limitations period starts to run is indeed the date of

accrual). In other words, courts (including some cited herein) often use the term “date of accrual” as

shorthand for “date on which the limitations period began to run,” even if they do not necessarily mean to

specifically convey that the date the limitations period starts to run is indeed the date of “accrual” as that

technical term is properly construed. See, e.g., D.S.S. by & through McDowell v. Prudential Ins. Co. of Am.,

No. 21-5315, 2022 WL 95165, at *4 (6th Cir. Jan. 10, 2022) (“[On December 31, 2014, the cause of action

accrued . . . and the [one-year] limitations period began to run. Thus, the district court did not err in

determining that the cause of action accrued on December 31, 2014, and that the limitations period ran one

year after that date.”); Bishop v. Children’s Ctr. For Dev. Enrichment, 618 F.3d 533, 536 (6th Cir. 2010)

(noting that while for some statutes the statute of limitations is “borrowed from state law, the actions accrue

and the statutory period begins to run according to federal law”). As a general matter, this may not foster

any confusion. But where the date the limitations period begins to run is determined by the discovery rule,

that date is not generally the date of accrual, and so in this context the two dates should not be equated or

referred to interchangeably. See, e.g., Rotkiske v. Klemm, 140 S. Ct. 355, 360 (2019) (contrasting the

“standard rule” of accrual—where “the limitations period commences when the plaintiff has a complete

and present cause of action”—to the “discovery rule.” (internal quotation marks omitted)). The Court

endeavors herein to adhere to this principle.

facts showing that these claims were timely under the discovery rule, which the Sixth Circuit was

treating as the statutorily mandated default rule for purposes of its analysis:

To show that these tort claims are time barred, [the defendant] thus had to establish

that the [plaintiff], exercising reasonable care, discovered or should have

discovered his fraudulent conduct before April 29, 2010. But the district court

inverted this burden. It held that, because the [plaintiff] did not allege that these

claims accrued before April 29, 2010, it could not be so. That's not how affirmative

defenses, such as a statute of limitations, work. [] It was [the defendant]’s burden

to show that the [plaintiff] should have discovered his fraudulent conduct before

the relevant time period, not the [plaintiff]’s burden to plead around the possibility.

Id. at 624–25.

In other words, if (as is not always the case) the discovery rule is the default rule, the

plaintiff does not need to specifically invoke it as grounds for delaying the start of the running of

the limitations period so as to make timely a claim that otherwise would have been untimely.11

This is because if the discovery rule is the default rule, generally it simply cannot be said that the

claim would have been untimely but for the application of the discovery rule; instead, generally,

it is the discovery rule itself that determines whether the claim is untimely. In other words, where

the discovery rule is the default rule, the plaintiff does not have to allege facts supporting

application of the discovery rule or facts showing that the claim was timely under the discovery

rule. This only stands to reason; courts generally do not impose upon plaintiffs the obligation to

allege facts showing (1) the applicability of the default rule for pegging the start of the running of

the limitations or (2) that under the default rule, the claim is not time-barred.

11 The situation is quite different when the discovery rule is not the default rule for pegging the start of the

running of the limitations period, and instead must be specially relied on by the plaintiff as an exception to

the general rule. See Nw. Nat. Ins. Co. of Milwaukee, Wisconsin v. Joslyn, Nos. 93-4266, 93-4295, 93-4332,

1995 WL 270995, *4 (6th Cir. May 8, 1995) (“When the complaint is untimely [under the default rule,

when it is not the discovery rule], and the plaintiff is relying on a discovery rule, the date of the discovery

should be pled.”).

As noted above, the discovery rule is the default rule for determining when the limitations

period begins to run on a copyright-infringement claim, and therefore the Publishers were not

required to affirmatively plead the date of discovery to avoid a statute-of-limitations defense.

Instead, the burden was on Brunson to show that the Publishers discovered her alleged copyright

infringement more than three years before they filed their claim, and she failed to carry that burden.

Except as indicated in the paragraph below, Brunson did not challenge the copyright-infringement

claim on any basis other than the statute of limitations. And so (again, except as indicated below),

the claim survives the Motion.

Brunson additionally argues that the Publishers are not entitled to statutory damages or

attorneys’ fees, because the date of the copyright registration for “Way Maker” was more than

three months after the song was first published. (Doc. No. 72 at 5 (citing 17 U.S.C. § 412(2) (stating

that “no award of statutory damages or of attorney’s fees . . . shall be made for any infringement

of copyright” if the effective date of registration is more than three months after the first

publication of the work.))). The Publishers concede this point and “withdraw their requests for

statutory damages and attorney’s fees.” (Doc. No. 82 at 7). Accordingly, the Motion will be granted

without objection to the extent that it seeks dismissal of the Publishers’ request for statutory

damages and attorney’s fees.

II. The Publishers’ claim for declaratory judgment will be dismissed.

In their Counter-Complaints, the Publishers allege that Brunson purposefully submitted a

deposit copy of her work that removed any indication that the work was “simply an insert” into

“Way Maker” (i.e., an insertion of Brunson’s work in place of the part of the original score of

“Way Maker” beginning at measure 56). (Doc. No. 66 at 22). The Publishers further state that

“[t]his knowing failure to truthfully identify the complete work in the deposit to the Copyright Office

constitutes fraud on the U.S. Copyright Office as a complete work was required to be submitted.” (Id).

In turn, the Publishers request the Court “declare that Brunson’s registration was obtained through

fraud, and that [her work] is not subject to copyright protection.” (Id. at 23). In Brunson’s

Memorandum, Brunson argues that the Publishers’ request for declaratory judgment should be

dismissed because (according to her): “(1) the sufficiency or insufficiency of the deposit copy does not

affect the validity of the registration, and (2) [she] was only required to submit a deposit copy of what

she was seeking [to register], not a copy of [her] work combined with Sinach’s version of ‘Way

Maker.’” (Doc. No. 72 at 7-8).

Fraud on the Copyright Office is not an independent claim, but some courts in the Sixth Circuit

nonetheless have “permitted claims for declaratory judgment that a copyright is invalid based on fraud

on the copyright office.” Gomba Music, Inc. v. Avant, 62 F. Supp. 3d 632, 642 (E.D. Mich. 2014).

To succeed in such a request, a party “must show that ‘the application for copyright registration is

factually inaccurate, that the inaccuracies were willful and deliberate, and that the Copyright Office

relied on those misrepresentations.’” Schenck v. Orosz, 3:13–CV–0294, 2013 WL 5963557, at *12

(M.D. Tenn. Nov.7, 2013) (quoting Jedson Engineering, Inc. v. Spirit Const. Servs. Inc., 720

F.Supp.2d 904 (S.D. Ohio 2010)). Here, the Publishers argue that Brunson’s copyright application

was allegedly factually inaccurate because Brunson did not provide a “complete copy” of her work

as required by 17 U.S.C. § 408(b). The Publishers argue that Brunson’s deposit copy was not a

complete copy since it did not disclose that her work was actually created to be part of a larger

work that belonged to someone else. (Doc. No. 66 at 22). The Court assumes arguendo that a

failure to provide a complete copy is not merely a violation of a particular requirement (i.e., to

provide a complete copy), but also grounds for finding that the copyright application was factually

inaccurate.

Though the definition of “complete copy” is not contained in the Copyright Act itself, there

is a definition provided in the Code of Federal Regulations. Under 37 C.F.R. § 202.20(b), a

complete copy of an unpublished work is a “copy or phonorecord representing the entire

copyrightable content of the work for which registration is sought.”12 Additionally, 17 U.S.C.

§ 409(9) states that a copyright application for a derivative work should identify “any preexisting

work or works that it is based on or incorporates.” In this case, the Publishers contend that

Brunson’s work was derivative of “Way Maker” and thus was a “derivative work,” such that the

application needed to identify “Way Maker” as a preexisting work in order for Brunson to be

credited with depositing a “complete copy” as required. Brunson, on the other hand, contends that

her work was not derivative of “Way Maker” and therefore she was required only to provide a

deposit copy of her work itself, without disclosing any relationship between it and “Way Maker.”

The Copyright Act defines “derivative work” as “a work based upon one or more

preexisting works, such as a translation, musical arrangement, dramatization, fictionalization,

motion picture version, sound recording, art reproduction, abridgment, condensation, or any other

form in which a work may be recast, transformed, or adapted.” 17 U.S.C. § 101. As the undersigned

explained previously,

A “derivative work” is a work based upon one or more preexisting works. .

. . “The only basis for reaching a conclusion that a work is ‘based upon’ another is

if there is substantial similarity between the two . . . .” Integral Sys., Inc. v.

Peoplesoft, Inc., No. C-90-2598- DLJ, 1991 WL 498874, at *12 (N.D. Cal. 1991)

(concluding that one work cannot be based upon another if the two are not

substantially similar). “Substantial similarity is determined under an ‘ordinary

listener’ test. Pursuant to this test, two works are deemed ‘substantially similar’

12 The Copyright Act defines “publication” as “the distribution of copies or phonorecords of a work to the

public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 101. Section 101

(the “Definitions” section of the Copyright Act) then provides one example of something that constitutes

publication, and one example of something that does not constitute publication: “The offering to distribute

copies or phonorecords to a group of persons for purposes of further distribution, public performance, or

public display, constitutes publication. A public performance or display of a work does not of itself

constitute publication.” Id.

Based on the definition and examples set forth in Section 101, and the allegations contained in the

Publishers’ claims for relief, the Court perceives no allegations in the Counter-Complaints that Brunson

“published” her work and will thus proceed by treating her copyright registration as one for unpublished

material.

where ‘the ordinary [listener], unless he set out to detect the disparities, would be

disposed to overlook them, and regard the work's aesthetic appeal as the same.’”

Negron v. Rivera, 433 F. Supp. 2d 204, 215 (D.P.R. 2006), aff'd sub nom. Torres-

Negron v. J & N Recs., LLC, 504 F.3d 151 (1st Cir. 2007) (citations omitted); see

also Stromback v. New Line Cinema, 384 F.3d 283, 297 (6th Cir. 2004) (“[T]he

question is whether, based upon his ‘net impression’ of the works’ expressive

elements, the ordinary lay observer would find them substantially similar to one

another.”); Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999) (stating that the

“ordinary observer test” is the traditional standard of copyright infringement)

Brunson v. Capitol CMG, Inc., No. 3:20-CV-01056, 2021 WL 4480479, at *3 (M.D. Tenn. Sept.

29, 2021)).

Here, the Publishers plead no facts to suggest to the Court that Brunson’s work was

derivative. Though the Publishers make the conclusory statement that Brunson’s act of

“remov[ing] the original bridge and insert[ing] her work in its place” “constitute[s] the creation of

an unauthorized derivative work,” the alleged facts in the Counter-Complaints do not support such

an assertion. (Doc. No. 66 at 20). The Publishers merely note that Brunson deleted a measure

notation at the top of her deposit copy, which (prior to the deletion) had indicated that her work

“was actually the fifty sixth measure of a larger work.” (Id. at 21). This observation is not relevant

to the actual test for determining whether a work is derivative: whether an ordinary listener would

find that the two works are substantially similar. See Negron, 433 F. Supp. 2d at 215. Indeed, the

Publishers incorporate paragraph 12 of Brunson’s Complaint into their Counter-Complaints. (Doc.

No. 66 at 20 (citing Doc. No. 1 at 3-4)). Paragraph 12 of Brunson’s Complaint states, “[t]he new

composition is as follows:” and then includes a copy of the sheet music for Brunson’s work.

Paragraph 12 of the Complaint, as incorporated by the Publishers, actually suggests to the Court

that Brunson’s work is a “new composition” and therefore not derivative.

As noted above, a derivative work is one “based on” one or more preceding works. The

Publishers might have been in a stronger position here if a work could be deemed “based on” a

preexisting work because it was inspired by, or intended for use with or within, a preexisting work.

But the Publishers have not shown, and the Court does not discern, that this is the case.

The Court will not belabor its conclusion that based on the pleadings to date, Brunson’s

work is not derivative. This is a conclusion that the Court has already explained in a somewhat

different and more detailed manner. See Brunson, 2021 WL 4480479, at *3-5. Accordingly, the

Publishers’ claim for declaratory judgment of fraud on the copyright office fails due to (1) a lack

of alleged factual matter plausibly suggesting that Brunson’s work was derivative of “Way Maker”

and (2) the corresponding implausibility of the claim that Brunson’s copyright application was

“factually inaccurate” specifically because she did not identify “Waymaker” as a preexisting work

on which her (supposedly derivative) work was based. Thus, the Publishers’ claim for fraud on the

copyright office will be dismissed for failure to state a claim under Rule 12(b)(6).

III. Brunson’s Motion to Strike will be granted in part and denied in part.

Brunson’s final request in the Motion is to strike certain affirmative defenses asserted by

Sinach, CCMG, and Integrity Music (collectively, “Defendants”). Specifically, Brunson seeks to

strike the following affirmative defenses asserted by all three Defendants: fair use, laches, waiver,

estoppel, license/consent/acquiescence, joint authorship, and joint ownership. (Doc. No. 72 at 8-

10). Additionally, Brunson seeks to dismiss the affirmative defense of “conduct of others” asserted

only by CCMG. (Id. at 10). Regarding all of the defenses except laches, Brunson argues essentially

that they should be stricken for Defendants’ failure to make clear the support or basis for the

defense. As to the laches defense, Brunson argues that the defense “simply has no application in

copyright cases.” (Id. at 9). In response, Defendants argue that they are required to plead only “fair

notice” of their affirmative defenses, which (according to Defendants) they have done.

“Rule 8(b)(1) provides generally that ‘[i]n responding to a pleading, a party must ... state

in short and plain terms its defenses to each claim.’ Rule 8(d)(1) requires that averments in

pleadings be ‘simple, concise, and direct,’ and that ‘[n]o technical form is required.’” Montgomery

v. Wyeth, 580 F.3d 455, 468 (6th Cir. 2009) (quoting Fed. R. Civ. P. 8(b)(1), 8(d)(1)). Affirmative

defenses may be pled in general terms, as long as they give fair notice to the plaintiff “of the nature

of the defense.” Lawrence v. Chabot, 182 F. App'x 442, 456 (6th Cir. 2006) (quoting 5 CHARLES

ALAN WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 1274). The Court

finds that the asserted defenses of waiver and estoppel do not provide fair notice to Brunson of the

nature of those defenses. Unlike some of the other challenged defenses—such as fair use, license,

joint authorship, and joint ownership—the application of a waiver or estoppel defense to the

present case is not intuitive from Brunson’s claims or the facts alleged either by Brunson or by the

Publishers. And Defendants fail to provide any explanation for the application of waiver or

estoppel here. Thus, these two affirmative defenses will be stricken.

The Court also will grant Brunson’s motion to strike Defendant CCMG’s asserted defense

of “conduct of others,” though for a different reason. While the “conduct of others” can be

implicated in other affirmative defenses, Defendant CCMG has not cited—and the Court was

unable to find on its own—Sixth Circuit case law suggesting that “conduct of others” is a stand-

alone affirmative defense.

Finally, the Court will grant Brunson’s Motion to Strike the asserted defense of laches,

though for still different reasons. The Supreme Court has previously held that laches was

unavailable as a defense against copyright infringement claims for damages that were brought

within the three-year statutory window (as Brunson noted is true for her claim in the present case).

See Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663, 667–68 (2014) (“Laches, we hold,

cannot be invoked to preclude adjudication of a claim for damages brought within the three-year

window.”) (interpreting 17 U.S.C. § 507(b)). Alternatively, in any event it appears to the Court

that Defendants have abandoned their affirmative defense of laches by failing to respond to

Brunson’s challenge to it made in her Motion to Strike. Defendants respond generally that “all

eight of the affirmative defenses [Brunson] seeks to strike are sufficiently pleaded because they

provide [] fair notice.” (Doc. No. 82 at 21). However, Brunson sought to strike Defendants’ laches

defense not on the basis of lack of fair notice, but rather on the statutory basis explained in Petrella.

Defendants have failed to even acknowledge, let alone respond in opposition, to this argument,

and the Court will therefore deem the laches defense abandoned. See Chem. Bank v. Kausmeyer,

No. 4:15CV1850, 2016 WL 7178662, at *5 (N.D. Ohio Dec. 9, 2016) (finding that a defendant

abandoned two affirmative defenses by failing to respond to the plaintiff’s summary judgment

arguments against them).

Defendants have requested leave to amend any affirmative defenses the Court determines

are insufficiently pled. The Court will grant Defendants leave to amend only the affirmative

defenses of waiver, estoppel, and conduct of others pursuant to Fed. R. Civ. P. Rule 15(a)(2). The

affirmative defense of laches will be stricken without leave to amend, both because the defense

has been abandoned and because any amendment would be futile in light of Petrella.

CONCLUSION

For the reasons discussed herein, Brunson’s Motion (Doc. No. 71) will be GRANTED in

part and DENIED in part. Specifically, the Motion will be GRANTED both insofar as it seeks

dismissal of the Publishers’ claim for declaratory judgment of fraud on the copyright office and

insofar as it seeks dismissal of the Publishers’ request for statutory damages and attorney’s fees

contained in the claim for copyright infringement. As to the remaining aspects of the Publishers’

copyright infringement claim, the Motion will be DENIED.

Additionally, the Motion will also be GRANTED insofar as it seeks to strike Defendants’

asserted defenses of waiver, estoppel, conduct of others, and laches. However, the Court will grant

Defendants leave to amend the defenses of waiver, estoppel, and conduct of others (but not laches).

To the extent the Motion seeks to strike any other affirmative defenses, it will be DENIED.

An appropriate order will be entered.

ELI RICHARDSON

UNITED STATES DISTRICT JUDGE