TufAmerica has a history of aggressively pursuing illegal samples. Past legal targets have included songs by LL Cool J, Frank Ocean and Jay Z.
To bring a lawsuit against the Beasties, TufAmerica needed deals with Robert Reed, Tony Fisher and James Avery, the three members of the group Trouble Funk, whose "Say What" was used on the Beastie' song "Shadrach" and whose "Let's Get Small" was used on the Beasties' "Hold It Now Hit It."
Trouble Funk emanated from the Washington D.C R&B and funk scene in the 1980s and they had a deal with Island Records. By the end of the decade, the agreement terminated.
In 1999, TufAmerica struck a deal with Reed and Fisher to administer their copyrights. Importantly, Avery was left out.
"Therefore, without the third co-owner, Robert Reed and Fisher could at best convey a non-exclusive license to TufAmerica," writes Judge Nathan.
Only exclusive rights would give TufAmerica the authority to sue. But then there was a 2012 agreement that TufAmerica made with Avery. It's not enough.
"Putting aside the issue of whether the 2012 Agreement and 1999 Agreements can be read together, the 2012 Agreement conveys nothing more than the bare right to sue," writes the judge. "And it has long been the rule that '[w]here... an agreement transfers 'nothing more than the bare right to sue... '[it] cannot be the basis for standing under the Copyright Act."
TufAmerica tried to anticipate this objection by having a clause in its agreement with Avery that states "[t]o the extent that exclusive licenses of any of Avery's copyrights in the Trouble Funk Copyrights... are necessary for 'standing' or similar reasons in connection with filing and maintaining a Trouble Funk Infringement Action, Avery hereby exclusively licenses such copyrights to Tuff City Records for the purpose of filing and maintaining Trouble Funk Infringement Actions."
The judge is hardly impressed. Inserting the word "exclusive" doesn't necessarily make it so. "The language is ambiguous," writes the judge, then turning to an larger look at the substance of the agreement, rather than the labels used.
She brings up other cases from years back — such as an infamous legal campaign by Righthaven — and comes to the conclusion that TufAmerica really doesn't have exclusive license on the songs it's suing over, and that acquiring the bare right to sue isn't the proper precursor to a copyright lawsuit. Thus, TufAmerica's attempt to punish the Beasties for sampling fails.
Universal Music, a co-defendant, was represented by Andrew Bart at Jenner & Block. The Beasties were represented by Theodore Max at Sheppard, Mullin.