On Wednesday, the 9th Circuit Court of Appeals set up a potential trial over rights to early recordings by Bob Marley and the Wailers.
As the appeals court noted, when Marley recorded music in Jamaica in the 1960s, "record keeping was not a primary concern," as a result, there's been "confusion in the marketplace as to which entities own licensing rights for these recordings."
In 2006, Rock River Communications made a deal with San Juan Music Group for the rights to sample 16 Marley recordings for a remix album. But after the album was made, Universal Music objected, claiming exclusive rights to the same recordings and asking Apple to remove the new album from the iTunes store, threatening to sue Relativity Media if one of the new songs was used in its Dear John film, and instructing a distributor to stop distributing physical copies of the album.
Rock River sued Universal for intentional interference with contracts, antitrust violations and misrepresentation of its copyright authority. The trial judge excluded certain evidence before any trial got going and then determined that Universal should prevail on summary judgment.
In a ruling on Wednesday, the 9th Circuit says that Universal Music carries a burden of proof that prevents a summary judgment at this stage, especially when its own claim to Marley recordings had yet to be fully established.
Universal Music asserted that it couldn't be held liable for communications with Rock River's business partners if the deals were based on an illegal arrangement.
"The ingenuity of this theory, although we ultimately reject it, is that it seeks to allow UMG to prevail without requiring UMG to actually establish that Rock River’s album infringed on anyone’s licensing rights," writes appellate judge Raymond Fisher.
The judge continues, "To be clear, a plaintiff cannot prevail on an [tortious interference] claim if its business expectancy is, in fact, unlawful. But the burden of proving such unlawfulness rests on the party alleging illegality."
That's where the confusion surrounding Marley rights comes into play, given that the parties might need to go to Jamaica to establish a valid chain-of-title.
"Here, it is not at all clear that UMG (or any other entity) holds exclusive rights to the Marley Recordings, such that Rock River’s attempt to distribute and license its Remixes would be an unlawful pursuit," says the judge. "Although the lack of documentation may make it difficult for Rock River to support its position that its chain of licensing rights (from Lee Perry to San Juan to Rock River) is valid, its IIPEA claim cannot be defeated based on the alleged illegality of the expectancy unless UMG affirmatively establishes that illegality."
UMG also attempted to prevail on summary judgment on the alternative theory that its cease-and-desist communications were made in good faith and immune from suit. But the appellate court says that taking the evidence in a light most favorable to Rock River, a reasonable jury could conclude that Universal sent its threats knowing that it did not actually have rights.
The dispute is remanded back to a trial court, and barring settlement or any unforeseen development, probably means a jury trial where what happened in Jamaica nearly a half-century ago will be discussed, and what the parties knew about that.