PHILADELPHIA – Songwriter Daniel Marino sued R&B singer Usher, Sony
Entertainment and others for alleged copyright infringement in 2011. Marino
says he was not paid his promised royalties for a song he co-wrote, “Bad Girl."
The song was originally called “Club Girl” and appeared on Usher’s 2004
diamond-selling album "Confessions."
The U.S. Court of Appeals for the Third Circuit ruled in favor of the defendants this month.
According to court documents, because Marino had created the song mutually with
two co-authors — including Usher — Marino cannot claim infringement.
“When two people are co-owners of a copyright — for example, two people write a
song — all those people can potentially be co-authors,” Tal Dickstein, partner at
Loeb & Loeb in New York told the Pennsylvania Record. “None of those people can
sue each other for infringement.”
During court proceedings, the defendants argued that Marino not
only was a co-author of the record, but gave permission that the track could be
used by Usher for his "Confessions" album
and promoted by Sony Music Entertainment.
“There was an alternate holding that the plaintiff had
impliedly consented to Usher’s use of the song that ultimately became 'Bad Girl,'” Dickstein said.
based on the plaintiff having supported Usher’s release, having commented on
it, actually receiving some royalties – $4,000 or so – before the lawsuit was
These combined actions gave the court reason to
conclude that Marino consented to the use of the song.
In addition to not ruling in Marino’s favor, Marino is ordered
to pay $110,888.60 in attorney fees and the court imposed more than $28,000 in
sanctions against Francis Malofiy, Marino’s attorney. Malofiy violated
Pennsylvania’s Rules of Professional Conduct by contacting an unrepresented
defendant, which is in violation of New York’s ethics law.
“We call it the ‘No Contact
Rule,' which is in place in pretty much any jurisdiction,” Dickstein said. “If
you know an individual or party is represented in connection with a matter, you
don’t speak with them at all about it, especially if you adverse them. You can’t
speak with them without saying or giving them advice to get a lawyer.”
According to court documents, Malofiy convinced the unrepresented
defendant to sign an affidavit, in hopes of receiving information or potential evidence
to use against Usher, Sony Music and the other defendants. The individual
defendant did not realize Malofiy was counsel to the plaintiff until the court deposition,
who brought it to his attention.
Malofiy is known to have represented other big name
copyright infringement lawsuits. He represented claims brought against 20th
Century Fox and Led Zeppelin. In the latter case, Malofiy’s ethics was again
brought into question.
“I do recall reading reports that during the trial
[Malofiy] was criticized by the judge for questionable conduct during the
trial,” Dickstein said.