The Black Eyed Peas used a sample of a 1980s song on one of their smash hits, and it has the original Cleveland area musicians spinning through the legal system to collect their shares of the royalties. For now they’ve landed back in the Summit County Court of Common Pleas to proceed with a breach of contract lawsuit.

In 1982, Cleveland musician and DJ Orrin Lynn Tolliver, Jr. was writing music and putting together bands to perform. That year he joined with Christopher, Samuel and James McCants to record a song titled “I Need a Freak.” According to Christopher McCants, Tolliver wrote and performed the lyrics while he and Samuel McCants wrote and performed the music. James McCants published the recording.

According to Christopher McCants, all four orally agreed that if the song earned any money, they would split the proceeds equally. In 1983 the song was released on an album by the same name that sold 100,000 copies. However the song grew in popularity when it was covered by the rap singer Too Short in 2000, and then by various rap bands afterward. The Black Eyed Peas then used a sample of the song in their 2005 hit record “My Humps.”

The financial success of its reuse spurred a series of lawsuits. Tolliver received a copyright in 2002 for both the lyrics and the music. James McCants received a copyright for recording the song, and James McCants issued a license to the Black Eyed Peas to use a sample.

In 2009, Tolliver sued James McCants in the U.S. District Court of Southern New York for copyright infringement, and ultimately the court found James McCants infringed on Tolliver’s copyright and awarded Tolliver about $1.2 million in damages.

In April 2011, Christopher McCants filed a copyright infringement suit in the U.S. District Court for Northern Ohio against, among others, Tolliver and James McCants. In McCants v. Tolliver, N.D. Ohio No. 11 CV 0664, 2011 WL 2893058 (July 15, 2011), the federal court dismissed Christopher McCants’ claim of infringement stating that he “must first establish his co-author status through a potential contractual dispute.” The court went on to observe that even if he established he was a co-author, he could not prevail in an infringement claim because a joint copyright owner cannot sue co-owners or co-owner licensees for infringement.

With that court directive, Christopher McCants filed a breach of contract lawsuit against Tolliver and James McCants in Summit Count Court of Common Pleas. James McCants failed to answer and the court granted default judgment against him. Tolliver filed a motion for summary judgment. Like a record spinning backward, the court went in the opposite direction with the federal court ruling the matter was an issue of copyright law and was under the exclusive jurisdiction of the federal courts.

McCants appealed to the Ninth District raising the error that this case was one of breach of contract not copyright. Judge Beth Whitmore noted the federal law prevents any state court from ruling on the matter of a copyright unless there are extra elements in the dispute that are beyond what is covered in a copyright. She noted the copyright protects an owner’s right to “reproduce, distribute, perform, display, and transmit a copyrighted work and to prepare derivative works based on a copyrighted work.” A state claim must contain an extra element that makes the claim qualitatively different from a copyright claim. Citing N. Am. Software, Inc. v James I. Black & Co., 1st Dist. Hamilton No. C-100696, 2011-Ohio-3376., the court said a promise to pay meets the extra element requirement. “McCants asserted that Tolliver and James McCants breached that oral agreement by receiving proceeds and not providing him with ‘his rightful share.’ This alleged promise to split the proceeds is ‘qualitatively different’ than that of a copyright infringement claim,” Judge Whitmore wrote.

The court ordered the case back to the Summit County Common Pleas Court for further proceedings. Judges Eve Belfance and Donna Carr concurred in the ruling.

McCants v. Tolliver, 2014-Ohio-3478
Opinion: http://sc.ohio.gov/rod/docs/pdf/9/2014/2014-ohio-3478.pdf
Civil Appeal From: Summit County Court of Common Pleas
Judgment Appealed From Is: Reversed
Date of Judgment Entry on Appeal: August 13, 2014

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