Partial Owner of Copyright Awarded Over $2 Million: Whoomp, There It Is: Fifth Circuit | Practical Law

Partial Owner of Copyright Awarded Over $2 Million: Whoomp, There It Is: Fifth Circuit | Practical Law

In Isbell v. DM Records, Inc., the US Court of Appeals for the Fifth Circuit affirmed the district court's rulings in a copyright infringement case concerning the song, Whoomp! (There It Is) resulting in an infringement damage award to the partial owner of the copyright of over $2 million, which included the co-owner's share of the award.

Partial Owner of Copyright Awarded Over $2 Million: Whoomp, There It Is: Fifth Circuit

by Practical Law Intellectual Property & Technology
Published on 22 Dec 2014 • USA (National/Federal)
In Isbell v. DM Records, Inc., the US Court of Appeals for the Fifth Circuit affirmed the district court's rulings in a copyright infringement case concerning the song, Whoomp! (There It Is) resulting in an infringement damage award to the partial owner of the copyright of over $2 million, which included the co-owner's share of the award.
On December 18, 2014, in Isbell v. DM Records, Inc., the US Court of Appeals for the Fifth Circuit affirmed the US District Court for the Eastern District of Texas's rulings that:
  • The plaintiff, Alvertis Isbell (Bell), owned 50% of the composition copyright in the song Whoomp! (There It Is).
  • The defendant was liable for copyright infringement.
  • In this case's circumstances, the plaintiff, as the partial owner of the copyright, could be awarded the full infringement damages of over $2 million, which included his co-owner's share of the award.
(No. 13-40878, (5th Cir. Dec. 18, 2014).)
In 1993, Tag Team, the musical artists who wrote and produced Whoomp!, entered into a recording agreement with Bellmark Records, which was in the business of owning sound recordings. The recording agreement established the ownership of the sound recordings and royalty payments and assigned 50% of the rights in the song to "Bellmark's affiliated designee publisher." Although the plaintiff was the president of Bellmark, he also formed his own publishing company, Alvert Music.
In 1997, Bellmark filed for bankruptcy and the defendant, DM Records, purchased Bellmark's assets and exploited Whoomp!. In 2002, Bell, doing business as Alvert Music, sued DM for copyright infringement seeking:
  • A declaratory judgment that Alvert Music owned the composition copyright in Whoomp!.
  • Damages for copyright infringement.
In 2012, the case went to trial and the district court found that:
  • Alvert Music owned the copyright as Bellmark's affiliated designee publisher.
  • DM was liable for:
    • copyright infringement; and
    • actual damages of over $2 million, which was the full amount of damages for DM's infringement of Whoomp!.
DM appealed and raised several procedural arguments, all of which failed before the Fifth Circuit. DM also argued that Bell, as 50% owner of the copyright, could not recover damages for Tag Team's share. The Fifth Circuit noted the issue of whether a partial owner of a copyright can be awarded infringement damages for his co-owner's share was one of first impression in the circuit.
The court acknowledged US Court of Appeals for the Second Circuit case law, which limits a copyright co-owner's damages award to its own share (Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 140 F.2d 268 (2d Cir. 1944)). However, the Fifth Circuit distinguished this case from Edward B. Marks and upheld the full amount of damages to Bell because:
  • In Edward B. Marks:
    • the facts involved the non-joinder of a copyright co-owner; and
    • there was no evidence for the jury to find the plaintiff was administrator for all the royalties.
  • In the present case, Bell testified that he was:
    • the administrator of 100% of the royalties; and
    • was responsible for accounting to Tag Team.