Tennessee court offers mixed decision to HFA in copyright infringing case filed by Eight Mile Style

By Emmanuel Legrand

A judge in Nashville, Tennessee has denied in part and granted in part a motion to dismiss filed by mechanical collections agency HFA in a case involving Eminem's copyrights. 

  Initially, music streaming platform   sued by two music publishing companies – Eight Mile Style and Martin Affiliated– which represent repertoire by US rapper Eminem, for failing to secure mechanical licenses to use songs such as 'Lose Yourself'. Eight Mile also sued HFA, which was the administrator chosen by Spotify to handle the streaming services' mechanical rights licensing requirements.

  Eight Miles claimed in the suit that HFA had engaged in vicarious and contributory copyright infringement. HFA filed a motion to dismiss the case. 

Taking steps to comply with the law

  In her decision, US District Court Judge Aleta Trauger affirmed the claim for contributory infringement while dismissing the claim of vicarious infringement. HFA also filed a Request for Oral Argument, which was denied as moot by the judge.

  The judge, noting that 'Lose Yourself' and other Eminem compositions have been streamed "billions of times," wrote: "The parties appear to agree that all of those streams at least could have been performed legally, if Spotify and/or its agents had taken the appropriate steps ahead of time and continued to comply with the law as the streaming occurred."

  The judge continued: "Plaintiffs allege that Spotify streamed recordings of the Eight Mile Compositions as if it had obtained compulsory mechanical licenses — and indeed fostered the impression that it had obtained those licenses — when, in fact, it had missed its chance to timely complete the required steps and therefore needed to obtain a negotiated license to render its ongoing actions non-infringing. Because no valid license was ever obtained, the plaintiffs argue, all of Spotify’s streams of the recorded Eight Mile Compositions were infringing."

Concealing infringement

  Trauger added: "Even if HFA was innocent in Spotify’s first alleged instances of infringement, the plaintiffs have plausibly alleged that its actions contributed to Spotify’s ability to continue infringing over time. HFA objects that it was under no obligation to police Spotify’s in-house decisions regarding infringement. Whether that is true or not, the plaintiffs have not merely alleged that HFA failed to affirmatively police Spotify’s conduct; they have alleged both that HFA knew and, through the ordinary fulfillment of its duties, should have known that the infringement was occurring and that HFA was helping to conceal it."

  Hence the decision from the court not to dismiss the claim of contributory infringement, noting that "HFA’s actions, in context, materially contributed to Spotify’s ability to infringe on an ongoing basis."

  On the issue of vicarious infringement, the judge dismissed the count on the ground that "it relies on an inapplicable form of secondary liability — although its premise that the underlying facts support secondary liability is not, itself, mistaken."

  The court decision allows Eight Mile Style to pursue its copyright infringement procedure against HFA.