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.
“That was 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 brought."
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.