Revised July 23, 1999
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
_____________________
No. 98-30046 _____________________
DAVID BATISTE; PAUL BATISTE; MICHAEL BATISTE,
Plaintiffs-Appellants-Cross-Appellees,
v.
ISLAND RECORDS INC; ISLAND RECORDS LTD; MCA MUSIC PUBLISHING, A Division of MCA, Inc; ATTRELL CORDES, also known as P M Dawn, doing business as P M Dawn; WADE FEATHERSTONE, Individually; GEE STREET RECORDS INC,
Defendants-Appellees-Cross-Appellants
and
ISAAC BOLDEN,
Defendant-Appellee.
_________________________________________________________________
Appeals from the United States District Court for the Eastern District of Louisiana _________________________________________________________________ June 21, 1999 Before KING, Chief Judge, and REAVLEY and BENAVIDES, Circuit Judges.
KING, Chief Judge:
Attrell Cordes, a successful singer and songwriter who
performs with his brother under the name “P.M. Dawn,” used a
digital sample of a musical composition that was originally
written and recorded by David, Paul, and Michael Batiste. Cordes included the digital sample in a song on a highly successful
album that was released by Island Records, Inc. and Gee Street
Records, Inc., and the Batistes seek damages and injunctive
relief for alleged copyright infringement and violations of the
Lanham Act, 15 U.S.C. § 1125, the Louisiana Unfair Trade
Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419, and Louisiana
state laws regarding conversion and misappropriation. The
district court dismissed the Batistes’ claims against Wade
Featherstone for lack of personal jurisdiction and granted all
defendants except Isaac Bolden summary judgment on all claims,
except Paul and Michael Batiste’s allegations of conversion and
misappropriation, which the court allowed Paul and Michael
Batiste to voluntarily dismiss without prejudice. We affirm the
judgment of the district court in all respects except that we
determine the district court abused its discretion by allowing
Paul and Michael Batiste to dismiss their surviving claims
without prejudice, and we remand with instructions to enter
judgment in favor of all defendants except Bolden on these claims
as well.
I. FACTUAL BACKGROUND
David, Paul and Michael Batiste (collectively, the Batistes)
are three brothers who, while performing together as a group
known as “David Batiste & the Gladiators,” wrote a musical
composition called “Funky Soul” in 1968. The Batistes performed
“Funky Soul” in New Orleans and recorded the song in 1970 with
2 the assistance of Isaac Bolden, a local music publisher and
record producer.
David Batiste, the eldest brother and leader and manager of
the group, entered into two written contracts with Bolden: (1)
a Songwriter’s Contract governing rights to the “Funky Soul”
musical composition, and (2) an Artist Contract governing rights
to the “Funky Soul” physical master tape and sound recording.
Under the Songwriter’s Contract, David Batiste warranted that the
“Funky Soul” musical composition was his “sole, exclusive and
original work” and transferred that composition, including the
title, words, music, and the exclusive right to secure copyright,
to Bolden. Under the Artist Contract, David Batiste transferred
to Bolden all rights to the physical master tape and the sound
recording of “Funky Soul” embodied thereon, including the
“exclusive, unlimited and perpetual right . . . to manufacture,
advertise, sell, lease, license or otherwise use or dispose of,
in any or all fields of use, by any method now or hereafter
known, throughout the world, records embodying the performances.”
Shortly after the recording session for “Funky Soul,” Bolden
obtained a certificate of copyright registration for the musical
composition identifying David Batiste as its sole writer. Bolden
authorized the manufacture and release of two records containing
“Funky Soul” in 1970, but neither record was a commercial
success.
3 Attrell Cordes and his brother perform together in the
highly successful musical group “P.M. Dawn.” In 1992, Cordes
purchased a copy of the “Funky Soul” record and decided to sample
it for use in a song of his own entitled “So On and So On” (“So
On”). Cordes recorded a six and one-half second portion of
“Funky Soul” from the record he purchased and used digital
technology to modify the recording. Cordes used this digital
sample in his song “So On” that was included on “the Bliss
Album,” which Island Records, Inc.1 and its affiliate, Gee Street
Records, Inc. (Gee Street), released on March 15, 1993.
Prior to “the Bliss Album” release, Gee Street determined
that Bolden held all rights to the “Funky Soul” musical
composition and sound recording and entered into three contracts
with him: (1) a Master Recording Sampling License, on January
26, 1993; (2) a Mechanical License Agreement, on March 3, 1993;
and (3) an Administration Agreement, on April 27, 1993. Under
the Master Recording Sampling License, Bolden granted Gee Street
“the non-exclusive right to manufacture [r]ecords embodying that
certain Master Recording, entitled ‘So On & So On’ . . . [which]
contains an interpolation of [Bolden’s] master recording,
entitled ‘Funky Soul.’” Under the Mechanical License Agreement,
1 At the time of the events leading to this lawsuit, Island Records, Inc. and Island Records, Ltd. were both subsidiaries of Polygram N.V. For the purposes of this opinion, we will refer to Island Records, Inc., Island Records, Ltd., or both, as Island Records.
4 Bolden consented to Gee Street’s release of “So On,” which
“interpolates a portion of the musical composition entitled
‘Funky Soul.’” Finally, under the Administration Agreement,
Bolden and MCA Music Publishing (MCA) agreed that Bolden owns a
forty percent share of “So On,” and that Bolden “grants licenses
and assigns to [MCA] exclusively the copyright and all other
rights . . . in and to [‘So On’].” In exchange for his allowing
the use of the “Funky Soul” sample, Gee Street paid Bolden a
$15,000 advance against record royalties in February 1993.
The liner notes accompanying “the Bliss Album” credit “D.
Batiste” as a co-writer of “So On” and state that “‘Funky Soul’
performed by David Batiste & The Gladiators [is] used under
license by Isaac Bolden.” The Batistes admit that they learned
that a portion of “Funky Soul” was used in “So On” no later than
July 1993, and that they prepared and submitted an application to
register as co-writers of “So On” with Broadcast Music, Inc., a
well-known performing rights society.
II. PROCEDURAL HISTORY
The Batistes filed this suit in the United States District
Court for the Eastern District of Louisiana on March 10, 1995,
alleging that Island Records, Gee Street, MCA, Cordes, Bolden,
and Wade Featherstone violated federal copyright laws, 17 U.S.C.
§§ 101-603; the Lanham Act, 15 U.S.C. § 1125; the Louisiana
Unfair Trade Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419
(LUTPL), and Louisiana state laws regarding conversion and
5 misappropriation. In addition, the Batistes allege in their
complaint that Bolden breached his fiduciary duty and contractual
obligation by failing to account for income that he has received
from the sale or distribution of records containing “Funky Soul”
and by participating in the misappropriation of the Batistes’
property and infringement of their copyrights. The Batistes seek
injunctive and declaratory relief, an accounting of all amounts
received from transactions relating to “the Bliss Album” and
“Funky Soul,” and damages.
Wade Featherstone filed a motion on October 15, 1996 to
dismiss the Batistes’ claims for lack of personal jurisdiction
and failure to state a claim upon which relief may be granted.
Featherstone asserted that he is a citizen and resident of
England and lacked sufficient jurisdictional contacts with the
state of Louisiana. Island Records, MCA, Gee Street, and Cordes
(collectively, defendants) filed a motion on December 6, 1996 to
dismiss the Batistes’ claims of copyright infringement for lack
of subject matter jurisdiction, arguing that the Batistes could
not demonstrate that they had obtained or applied to obtain a
valid copyright registration for “Funky Soul.”2 Defendants also
2 Although the district court’s order on September 8, 1997 states that defendants’ motion to dismiss for lack of subject matter jurisdiction is “granted,” the accompanying opinion offers no support for this conclusion. In fact, the opinion states that the Batistes have standing to bring a copyright infringement claim as beneficial owners of Bolden’s copyright, and the district court ultimately granted defendants summary judgment on the copyright claims. Defendants note this inconsistency and
6 filed a motion for summary judgment on all claims, and the
Batistes filed a motion seeking summary judgment in their favor
on their copyright, Lanham Act, and misappropriation claims
against defendants and Bolden.
The district court granted defendants summary judgment on
all of David Batiste’s claims, and on all of Paul and Michael
Batiste’s claims except conversion and misappropriation.3 The
argue on appeal that if the district court did deny their motion to dismiss for lack of subject matter jurisdiction, it did so in error.
We find no merit in defendants’ argument. Initially, we note that the district court subsequently amended its September 8 order to explicitly state that it had granted summary judgment on all of David Batiste’s claims, and on all of Paul and Michael Batiste’s claims except their state-law claims for conversion and misappropriation, and that the court entered partial judgment on the copyright claims under Federal Rule of Civil Procedure 54(b). These actions demonstrate that the district court did deny defendants’ motion to dismiss, and we agree with its determination that the Batistes may properly assert their copyright infringement claims as beneficial owners of Bolden’s registered copyright. See 17 U.S.C. § 501(b) (“The legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it.”); Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984) (“When a composer assigns copyright title to a publisher in exchange for the payment of royalties, an equitable trust relationship is established between the two parties which gives the composer standing to sue for infringement of that copyright.”). 3 The district court appears to have included Bolden in its disposition of the motions for summary judgment and dismissal. We have carefully reviewed the record, however, and we find no indication that Bolden either joined defendants’ motion for summary judgment or made such a motion on his own behalf. We therefore necessarily construe the district court’s order as granting summary judgment only on those claims made against the moving defendants, leaving the Batistes’ claims against Bolden unaffected.
7 court found that the Songwriter’s Contract effectively
transferred any interest David Batiste had in “Funky Soul” to
Bolden, that Bolden had authorized defendants to use the
composition, and that therefore the Batistes had failed to raise
a genuine issue of material fact on their copyright infringement
claims. The district court also determined that the Batistes
failed to raise an issue of material fact that defendants had
violated the Lanham Act because “Funky Soul” was attributed to
“David Batiste & The Gladiators” in the liner notes accompanying
the album, and that defendants’ actions were not unfair or
deceptive under the LUTPL because David Batiste transferred any
interest he had in the “Funky Soul” composition to Bolden in
exchange for royalties and the Batistes failed to produce any
evidence indicating that defendants knew or should have known of
any interest in “Funky Soul” held by Paul and Michael Batiste.
Finally, the district court granted summary judgment on David
Batiste’s conversion and misappropriation claims because he had
transferred any ownership rights he held to Bolden in 1970, but
the court refused to grant summary judgment on similar claims
raised by Paul and Michael Batiste because they “need only
establish that the defendants are in possession of property which
belongs to them.” In subsequent orders, the district court
dismissed the Batistes’ claims against Featherstone as lacking
8 personal jurisdiction and dismissed their remaining state-law
claims under 28 U.S.C. § 1367(c).4 The Batistes timely appeal.
III. DISCUSSION
The Batistes argue on appeal that the district court
erroneously granted defendants summary judgment on their
copyright infringement, Lanham Act, LUTPL, and conversion and
misappropriation claims, and that Featherstone had sufficient
minimum contacts with the state of Louisiana for the court to
exercise personal jurisdiction.5 Defendants cross-appeal,
arguing that the district court abused its discretion by
dismissing without prejudice the Batistes’ surviving state-law
claims.6 We address these arguments in turn.
A. Copyright Infringement
4 Under 28 U.S.C. § 1367(c), a district court “may decline to exercise supplemental jurisdiction over a claim . . . if-- (1) the claim raises a novel or complex issue of State law, (2) the claim substantially predominates over the claim or claims over which the district court has original jurisdiction, (3) the district court has dismissed all claims over which it has original jurisdiction, or (4) in exceptional circumstances, there are other compelling reasons for declining jurisdiction.” 5 The Batistes failed to provide any argument in either their briefs or at oral argument supporting their appeal of the district court’s order dismissing Featherstone for lack of personal jurisdiction, and we consider this claim abandoned. See Cinel v. Connick, 15 F.3d 1338, 1345 (5th Cir. 1994). 6 Bolden does not appeal, and we do not consider, the district court’s dismissal without prejudice of the Batistes’ claims against him under 28 U.S.C. § 1367(c).
9 The Batistes argue that the district court erred in granting
summary judgment on their copyright infringement claims because
defendants’ use of “Funky Soul” infringed the “Funky Soul”
copyright and was not authorized by the 1970 Songwriter’s and
Artist Contracts or the three contracts that Bolden entered into
in 1993. The Batistes contend that the Songwriter’s and Artist
Contracts between David Batiste and Bolden are invalid because
David Batiste does not remember signing them and the contracts
are “suspect enough to raise a factual issue.” Furthermore, the
Batistes argue that these contracts did not anticipate or
authorize the digital sampling method at issue, and that the
contracts cannot apply to Paul and Michael Batiste because they
were minors at the time and did not authorize David Batiste to
negotiate on their behalf.
The Batistes allege that even if the 1970 contracts did
allow Bolden to license the use of a digital sample of “Funky
Soul” to defendants, the contracts that Bolden executed in 1993
do not authorize defendants’ use. Specifically, the Batistes
claim that either (1) “So On” is a “derivative work,” and the
1993 contracts serve only to authorize and share profits from the
new material Cordes added to the song, not the pre-existing work;
or (2) the contracts between Bolden and Gee Street/MCA purport to
render “So On” a “joint work,” a characterization that would
effectively merge Cordes’s contribution with Bolden’s rights in
“Funky Soul,” and that such a characterization under the “Twelfth
10 Street Rag” doctrine7 makes the contracts invalid because they
attempt to achieve a result prohibited by copyright law.8
“We review a grant of summary judgment de novo, applying the
same criteria used by the district court in the first instance.”
Texas Manufactured Housing Ass’n v. City of Nederland, 101 F.3d
1095, 1099 (5th Cir. 1996); see Tolson v. Avondale Indus., Inc.,
141 F.3d 604, 608 (5th Cir. 1998). Summary judgment is proper
7 The “Twelfth Street Rag” doctrine derives from the Second Circuit’s decision in Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, modified on reh’g, 223 F.2d 252 (2d Cir. 1955), allowing the assignee of an ownership interest in a musical composition to add new elements to a pre-existing work and thereby create new ownership interests in the resulting “joint work,” extinguishing any other ownership interests in the pre-existing work. Congress overruled this doctrine in 1976 by adopting the current definition for “joint work,” which requires that each author intend the merger at the time the author prepares his or her contribution. See 17 U.S.C. § 101 (defining “joint work” as a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole”). 8 The Batistes make two other arguments respecting the validity of the 1993 contracts of which we easily dispose. The Batistes claim that (1) the alleged infringements occurred before any licenses were issued by Bolden, and defendants cannot demonstrate that the agreements preceded the release of “the Bliss Album,” and (2) defendants attempted to assign the benefits of the contracts to each other without obtaining Bolden’s prior written consent. We note initially that the summary judgment evidence shows that the Master Recording Sampling License and Mechanical License Agreement had already been executed at the time of release and that the remaining, unexecuted contract does not purport to authorize the use of “Funky Soul.” In addition, to the extent that any writing requirement in the contracts applies to assignments among defendants, the summary judgment evidence demonstrates that Bolden waived such a requirement and implicitly consented to defendants’ use. See Lulirama Ltd. v. Axcess Broadcast Servs., Inc., 128 F.3d 872, 879 (5th Cir. 1997) (stating that, under federal copyright law, a nonexclusive license may be granted orally or implied from conduct).
11 “if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show
that there is no genuine issue as to any material fact and that
the moving party is entitled to a judgment as a matter of law.”
FED. R. CIV. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317,
327 (1986). The party moving for summary judgment bears the
initial burden of showing an absence of evidence to support the
nonmoving party’s case, see id. at 322-27, but, once this burden
has been met, the nonmoving party can resist the motion by making
a positive showing that a genuine issue of material fact exists,
see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986).
The nonmovant must go beyond the pleadings and designate specific
facts showing that there is a genuine issue of material fact for
trial. See Celotex, 477 U.S. at 324-25. Finally, we note that a
grant of summary judgment may be affirmed on any ground that was
raised to the district court and upon which both parties had the
opportunity to present evidence. See Conkling v. Turner, 18 F.3d
1285, 1296 n.9 (5th Cir. 1994).
The only question that we face regarding the Batistes’
copyright claims is whether the Batistes have successfully
demonstrated a genuine issue of material fact that the multiple
contracts among the parties are insufficient to authorize
defendants’ use of a digital sample of “Funky Soul” in their song
“So On.” After carefully examining the contracts between David
Batiste and Bolden and the contracts between Bolden and Gee
12 Street/MCA, we agree with the district court’s conclusion that
there is no such issue of material fact and that defendants are
entitled to summary judgment on these claims.
The Batistes point to no evidence supporting their
allegation that the 1970 contracts are invalid or otherwise
“suspect,” and David Batiste’s inability to remember signing them
is not sufficient to raise a material issue as to the validity of
the agreements. See Lone Star Indus., Inc. v. Nelstad Material
Corp., 811 F. Supp. 147, 149 (S.D.N.Y. 1993). David Batiste
granted Bolden the entire musical composition, including the
exclusive right to secure copyright, “all rights of whatsoever
nature” relating to the copyright, and the right to license, “in
any or all fields of use, by any method now or hereafter known,
throughout the world, records embodying the performances.” Such
a grant is sufficiently broad to include the licensing of a
record containing a digital sample of “Funky Soul.” Cf. Boosey &
Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481,
485-88 (2d Cir. 1998) (concluding that 1939 agreement conveying
the right “to record [a composition] in any manner, medium or
form” for use “in [a] motion picture” is sufficiently broad to
include distribution of the motion picture in laser disc format);
Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881,
885 (9th Cir. 1996) (stating that right to synchronize music in
any future technologies, including videocassettes, is included in
clause granting party all the music rights of a motion picture).
13 Finally, we note that the validity of Paul and Michael Batiste’s
allegations that David Batiste did not have authority to enter
the 1970 contracts on their behalf is immaterial to their claims
of copyright infringement against any party’s use that was
authorized by their brother. See Quintanilla v. Texas Television
Inc., 139 F.3d 494, 498 (5th Cir. 1998) (“‘A co-owner of a
copyright cannot be liable to another co-owner for infringement
of the copyright.’”) (quoting Oddo v. Ries, 743 F.2d 630, 632-33
(9th Cir. 1984)); Cortner v. Israel, 732 F.2d 267, 271 (2d Cir.
1984) (“It is elementary that the lawful owner of a copyright is
incapable of infringing a copyright interest that is owned by
him; nor can a joint owner of a copyright sue his co-owner for
infringement.”); MELVIN B. NIMMER & DAVID NIMMER, 1 NIMMER ON COPYRIGHT
§ 6.10 (1999) [hereinafter NIMMER] (“[A]n authorization to the
defendant from one joint owner will be an effective defense to an
infringement action brought by another joint owner.”).
We also find no merit in the Batistes’ arguments that the
1993 contracts between Bolden and Gee Street/MCA are invalid
because they purport to create a “joint work.” The contracts
recognize that Bolden, as the owner of the “Funky Soul”
copyright, retains his copyright therein. See Gilliam v.
American Broadcasting Cos., 538 F.2d 14, 22 (2d Cir. 1976)
(stating that provision in license retaining rights in pre-
existing script “suggest[s] that the parties did not consider
themselves joint authors of a single work”). Although the
14 Administration Agreement does provide that Bolden and MCA jointly
own “So On” as an authorized, derivative work, joint ownership of
a derivative work does not alone create a “joint work.” The
policies underlying the “Twelfth Street Rag” doctrine thus do not
apply, and we see no conflict between the 1993 contracts and
Congress’s abrogation of that doctrine. Furthermore, it is clear
from the face of the 1993 contracts that they form a license to
use “Funky Soul” and do not merely authorize and share profits
from Cordes’s additional material. We therefore conclude that
the district court was correct in its determination that no
genuine issue of material fact exists regarding defendants’
authorized use of “Funky Soul” and properly entered summary
judgment on the copyright infringement claims in their favor.
B. Lanham Act
The Batistes argue that the district court erroneously
granted summary judgment on their claims that defendants
“mutilate[d]” “Funky Soul” and that this “abuse” of their work
amounts to “reverse passing off” in violation of § 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a).9 Relying on the Second
9 Under § 43(a),
Any person who, on or in connection with any goods or services . . . uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods,
15 Circuit’s decision in Gilliam, the Batistes claim that an author
has a “legal and moral right to have his work attributed to him
in the form in which he wrote it,” and that defendants’ licenses
“would not have permitted defendants to mutilate plaintiffs’
works.” Finally, the Batistes argue that defendants failed to
properly credit their contribution to “So On” because Michael and
Paul Batiste’s “authorship contributions” were not mentioned and
that the “Funky Soul Track” constitutes the entire instrumental
track in “So On.”
In Gilliam, the Second Circuit considered a claim by a group
of authors and performers known as “Monty Python” seeking a
preliminary injunction to prevent the American Broadcasting
Company (ABC) from broadcasting edited versions of three of their
programs. See 538 F.2d at 17. The Second Circuit enjoined the
broadcasts, concluding that the group had shown a likelihood of
succeeding on the merits of their claims that the editing
exceeded the scope of ABC’s license. See id. at 22-23. The
court further determined that the group would likely succeed on
its claim under the Lanham Act that, “regardless of the right ABC
had to broadcast an edited program, the cuts made constituted an
actionable mutilation of Monty Python’s work,” and that such a
services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a).
16 cause of action “finds its roots in the continental concept of
droit moral, or moral right, which may generally be summarized as
including the right of the artist to have his work attributed to
him in the form in which he created it.” Id. at 23-24; see 3
NIMMER at § 8D.04[A][2].
Even if we were to adopt the reasoning of the Second Circuit
and determine that the “manipulation” that “Funky Soul” suffered
is sufficient to state a cause of action under the Lanham Act, we
still must conclude that summary judgment in favor of defendants
was proper because the Batistes have failed to demonstrate the
existence of a genuine issue of likelihood of confusion. See 15
U.S.C. § 1125(a)(1)(A) (prohibiting misleading representations of
fact which are likely to cause confusion, mistake, or deception);
3 NIMMER at § 8D.04[A][2] (stating that, for a plaintiff to
prevail on such a manipulation claim, “it must invoke the
appropriate elements for relief under the Lanham Act, rather than
simply serving as a back-door method for reviving failed
copyright claims”) (footnote omitted). The Batistes point to no
evidence in the record demonstrating that consumers were confused
or deceived by either the use of a digital sample of “Funky Soul”
in “So On” or the attribution to “David Batiste & The Gladiators”
as a co-author of “So On.” The Batistes’ claim that Paul and
Michael Batiste were improperly excluded from the liner notes
accompanying the album also fails to suggest that consumers were
confused, especially because the liner notes do credit the name
17 of the band in which both Paul and Michael Batiste performed.
Finding no evidence of a genuine issue of consumer confusion, we
affirm the district court’s grant of summary judgment in favor of
defendants on the Batistes’ Lanham Act claims.
C. State-Law Claims
The Batistes argue that the district court erred in granting
defendants summary judgment on their claims of unfair trade
practices under the LUTPL, conversion, and misappropriation. The
Batistes again contend that the district court improperly
determined that the Songwriter’s and Artist Contracts that David
Batiste entered into in 1970 are valid and authorize defendants’
use of “Funky Soul.”
The Batistes’ claims of unfair trade practices, conversion
and misappropriation are delictual under Louisiana law and are
therefore subject to a one-year prescriptive period. See LA.
REV. STAT. ANN. § 51:1409(E) (stating that a private action under
the LUTPL “shall be prescribed by one year running from the time
of the transaction or act which gave rise to this right of
action”); LA. CIV. CODE ANN. § 3492 (“Delictual actions are subject
to a liberative prescription of one year.”); Johnson v. Concordia
Bank & Trust Co., 671 So. 2d 1093, 1098 (La. Ct. App. 1996)
(“Since conversion is a tort, the prescriptive period for
delictual actions applies to plaintiff’s action.”); Adams v.
First Nat’l Bank of Commerce, 644 So. 2d 219, 222-23 (La. Ct.
App. 1994) (determining that prescriptive period of one year
18 applies to cause of action for unfair trade practices); National
Union Fire Ins. Co. v. Spillars, 552 So. 2d 627, 630 (La. Ct.
App. 1989) (finding a suit based on misappropriation or wrongful
taking “is therefore a delictual action and subject to liberative
prescription of one year”). As a general rule, the prescriptive
period begins to run when the plaintiff has actual or
constructive knowledge of the alleged tortious act. See Mistich
v. Cordis Mfg. Co., 607 So. 2d 955, 956 (La. Ct. App. 1992).
“[T]he Bliss Album” containing the digital sample of “Funky
Soul” was released in March 1993, and the Batistes admit that by
July 1993 they knew that defendants had used “Funky Soul” without
their permission. Nonetheless, the Batistes did not file this
suit until March 1995. In their reply brief, the Batistes argue
that this court held in Songbyrd, Inc. v. Bearsville Records,
Inc., 104 F.3d 773 (5th Cir. 1997), that an action to recover for
misappropriation of masters and sound recordings is not subject
to liberative prescription, and that “this case involves a direct
dispute over ownership of the master rights.” The Batistes
further contend that their remaining state law claims are saved
from prescription by the doctrine of equitable tolling--
specifically, they claim that defendants’ “absolute refusal to
provide information” after the Batistes contacted Bolden and
defendants in mid-1993 acted to toll the prescriptive period and
makes their present claims timely.
19 The Batistes’ arguments misconstrue both our decision in
Songbyrd and the equitable tolling doctrine, and neither of these
contentions saves their state-law claims from the applicable one-
year prescriptive period. Initially, we note that our
determination that the plaintiff’s cause of action in Songbyrd
was not subject to the one-year prescriptive period relied on our
conclusion that the plaintiff’s claim, which sought recognition
of its ownership interest in physical master recordings and the
return of those recordings, was a “revindicatory action” seeking
the return of property rather than a “personal action.” See
Songbyrd, 104 F.3d at 777. The Batistes, however, do not assert,
and there is no evidence suggesting, that defendants ever
possessed the physical master recording or any other physical
property belonging to the Batistes. Rather, the Batistes argue
that the “Funky Soul” sound recording was misappropriated because
defendants used it in “So On,” and they seek damages for this
use. The Batistes’ claims are therefore properly considered
“personal actions” and are subject to the one-year prescriptive
period. See id. at 777-79. Finally, we decline the Batistes’
invitation to invoke the equitable tolling doctrine because the
Batistes admit that they knew the facts underlying their cause of
action and sought legal advice on how to pursue their claims more
than one year prior to filing suit against defendants. Cf.
Kavanaugh v. Long, 698 So. 2d 730, 738 (La. Ct. App. 1997)
(stating that equitable tolling suspends prescriptive period for
20 medical malpractice claim, “but only until the patient knew or
should have known of the malpractice or concealment from other
sources”). We therefore affirm the district court’s grant of
summary judgment in favor of defendants on the Batistes’ claims
of unfair trade practices, and on David Batiste’s claims of
misappropriation and conversion.
D. Pendent Jurisdiction
Following the district court’s entry of summary judgment on
all the Batistes’ claims against defendants except Paul and
Michael Batiste’s claims of conversion and misappropriation, the
court declined to retain supplemental jurisdiction over the
remaining claims under 28 U.S.C. § 1367 and granted the Batistes’
motion to voluntarily dismiss these claims without prejudice.
Defendants appeal the district court’s decision to dismiss these
claims without prejudice and urge us to render judgment on these
claims as well, arguing that they are also time-barred because
they were filed more than one year after Paul and Michael Batiste
admit they knew the facts underlying their causes of action.
Defendants contend that the district court abused its discretion
by allowing the Batistes’ voluntary dismissal just one month
before trial and after defendants had spent three years and more
than one million dollars fighting this litigation, and defendants
further note that the parties had engaged in extensive discovery
including numerous depositions, provided the district court with
21 hundreds of pages of briefing and several hours of oral argument,
and had “extensively addressed” these remaining claims.
We review a district court’s decision to decline
jurisdiction over pendent state-law claims for an abuse of
discretion. See Robertson v. Neuromedical Ctr., 161 F.3d 292,
296 (5th Cir. 1998); McClelland v. Gronwaldt, 155 F.3d 507, 519
(5th Cir. 1998). “Our review is guided by the relevant statutory
provisions governing the exercise of supplemental jurisdiction,
see 28 U.S.C. § 1367(c), as well as the Supreme Court’s
articulation of the scope and nature of district courts’
discretion in exercising jurisdiction over pendent state law
claims.” McClelland, 155 F.3d at 519. We must therefore
consider both the statutory provisions of 28 U.S.C. § 1367(c) and
the balance of the relevant factors of judicial economy,
convenience, fairness, and comity that the Supreme Court outlined
in Carnegie-Mellon University v. Cohill, 484 U.S. 343, 350-51
(1988), and United Mine Workers v. Gibbs, 383 U.S. 715, 726
(1966), in determining whether the district court abused its
discretion in allowing the Batistes’ voluntary dismissal of their
remaining state-law claims.
Although we have stated that our “general rule” is to
decline to exercise jurisdiction over pendent state-law claims
when all federal claims are dismissed or otherwise eliminated
from a case prior to trial, this rule is neither mandatory nor
absolute. McClelland, 155 F.3d at 519 (citing Wong v. Stripling,
22 881 F.2d 200, 204 (5th Cir. 1989)); see Cohill, 484 U.S. at 350
n.7 (stating that “in the usual case in which all federal-law
claims are eliminated before trial, the balance of factors to be
considered under the pendent jurisdiction doctrine . . . will
point toward declining to exercise jurisdiction over the
remaining state-law claims”). Thus, while the district court’s
dismissal of the Batistes’ federal claims “provides ‘a powerful
reason to choose not to continue to exercise jurisdiction,’ no
single factor is dispositive in this analysis.” McClelland, 155
F.3d at 519 (quoting Cohill, 484 U.S. at 351); see Newport Ltd.
v. Sears, Roebuck & Co., 941 F.2d 302, 307 (5th Cir. 1991). We
therefore must review the district court’s decision “in light of
the specific circumstances of the case at bar.” McClelland, 155
F.3d at 519; see Parker & Parsley Petroleum Co. v. Dresser
Indus., 972 F.2d 580, 585 (5th Cir. 1992).
We begin our analysis of the factors relevant to the pendent
jurisdiction inquiry by noting that the remaining claims do not
involve any “novel or complex” issues of state law. Newport
Ltd., 941 F.2d at 308 (stating that district court abused its
discretion in allowing plaintiff to voluntarily dismiss state-law
claims because, inter alia, the remaining issues “present no
novel or especially unusual questions which cannot be readily and
routinely resolved by the court a 4quo”); cf. McClelland, 155
F.3d at 519-20 (“[O]ur section 1367(c) analysis results in the
conclusion that remand is appropriate” based, in part, on the
23 presence of “at least one ‘novel or complex’ issue of state
law.”); Parker & Parsley Petroleum, 972 F.2d at 589 (stating that
principles of federalism and comity “point strongly toward
dismissal” because “[a]ll of the remaining legal issues of the
case, of course, are of state law . . . [and] are difficult
ones”). The district court here had already granted defendants
summary judgment on some state-law claims, and, as we set forth
above, all state-law claims are prescribed. The absence of any
difficult state-law questions thus weighs heavily toward our
conclusion that the district court abused its discretion in
refusing to retain jurisdiction over the remaining claims.
We also conclude that the factors of judicial economy,
convenience, and fairness to the parties strongly point toward
our conclusion that the district court erred by not retaining
jurisdiction here. The case had been pending in the district
court for almost three years when the court allowed the Batistes’
voluntary dismissal, and the trial was scheduled to begin one
month later. See Newport Ltd., 941 F.2d at 307-08 (“[A]fter four
years of litigation produced 23 volumes and thousands of pages of
record, the preparation of a pretrial order exceeding 200 pages,
over a hundred depositions, and according to counsel nearly two
hundred thousand pages of discovery production, the declining to
hear this case on the eve of trial constituted an abuse of the
trial court’s discretion.”); cf. Cohill, 484 U.S. at 351 (“When
the single federal-law claim in the action was eliminated at an
24 early stage of the litigation, the District Court had a powerful
reason to choose not to exercise jurisdiction.”). The instant
case has produced more than sixteen volumes of record over the
course of three years, numerous depositions and discovery
disputes, and significant consideration by the district court of
multiple motions to dismiss claims or grant summary judgment.
See Parker & Parsley Petroleum, 972 F.2d at 587 (“[T]he amount of
judicial resources that the case has consumed is most important
for our analysis as an indication of the familiarity of the forum
with the case and its ability to resolve the dispute
efficiently.”). The familiarity of the district court with the
merits of the Batistes’ claims demonstrates that further
proceedings in the district court would prevent redundancy and
conserve scarce judicial resources, and we therefore conclude
that principles of judicial economy, convenience, and fairness to
the parties weigh heavily toward our determination that the
district court abused its discretion in dismissing the Batistes’
remaining claims.
After considering and weighing all the factors present in
this case, and relying especially on our conclusion that the
district court was intimately familiar with the Batistes’ claims
and the absence of any difficult state-law issue in the remaining
claims, we thus conclude that the district court abused its
discretion and reverse its decision dismissing Paul and Michael
Batiste’s conversion and misappropriation claims without
25 prejudice. Furthermore, in the interest of further judicial
economy and in light of our determination above that the
Batistes’ state-law claims are prescribed, we remand Paul and
Michael Batiste’s conversion and misappropriation claims to the
district court with instructions to enter judgment in favor of
all defendants except Bolden, disposing of all claims against
such defendants.
IV. CONCLUSION
For the foregoing reasons, we AFFIRM the judgment of the
district court granting defendants summary judgment and
dismissing Featherstone for lack of personal jurisdiction,
REVERSE the district court’s dismissal of Paul and Michael
Batiste’s misappropriation and conversion claims against all
defendants except Bolden, and REMAND with instructions to enter
judgment in favor of such defendants on those claims.