Metropolitan News-Enterprise


Friday, November 8, 2019


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Ninth Circuit Leaves in Place Ban on Release Of ‘Demo’ Recording Made in 1991

Orders Quick Hearing on Preliminary Injunction to Bar Issuance Of CD Featuring Performance by Singer Steve Perry


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals has left in place a temporary restraining order—extended to the point that it has become, in effect, a preliminary injunction—barring the release of recordings made nearly 30 years ago by singer Steve Perry in a garage, for testing purposes, and forbidding any publicizing of the intended marketing of a CD containing the performances.

A three-judge panel on Wednesday faulted District Court Judge John F. Walter of the Central District of California for prolonging the TRO in the absence of findings of fact and conclusions of law. It instructed that, unless the parties agree to the contrary (settlement negotiations are in progress), a hearing on the issuance of a preliminary injunction be conducted on an expedited basis.

The opinion also rejects the contention of defendant Phil Brown that Walter erred in denying his anti-SLAPP motion, under California law, and in applying California’s long-arm statute to establish personal jurisdiction over him; he now resides in Tennessee.

Former Lead Singer

The pleading seeking the TRO says of Perry:

“Best known as the former lead singer of the rock band ‘Journey’ during that group’s most commercially successful periods from 1977 to 1987, and 1995 to 1998, Perry co-wrote a number of the band’s greatest hits….Perry recorded seven albums with ‘Journey,’ which has sold about 54 million albums and singles in the U.S. and an estimated 75 million worldwide….Perry was inducted into the Rock and Roll Hall of Fame as a member of ‘Journey.’ ”

Brown, like Perry, is a singer/songwriter. In 1991, in the garage at Brown’s then-home in Sylmar, there was recorded on an eight-track tape machine Perry’s vocalizing of two songs written by Brown and two on which they had collaborated.

Not Studio Quality

Perry said in a declaration in support of the TRO:

“My recordings of those four songs in Brown’s garage were made only for ‘demo’ purposes, to see if the songs, were creatively acceptable and might have the potential for future release. Those home recordings did not have the same quality as a recording made in a proper recording studio, and while I performed those songs well enough to evaluate whether I wanted to do anything with them in the future, I did not perform them as I would have if I were recording a studio performance for public release. I never intended those recorded vocal performances to be publicly released because I wasn’t trying to create vocal performances, or recordings of my vocal performances, that were appropriate for public release, and I didn’t and don’t believe those recordings meet my standards for public release.”

He set forth that he subsequently decided against recording the songs for public release, at the present time.

The bid for a TRO was made “on the grounds that Defendant has, without Perry’s permission, used Perry’s registered mark ‘Steve Perry’ and Perry’s likeness to promote Brown and his band, causing irreparable harm to Plaintiff in violation of his Lanham Act and publicity rights,” adding:

“This application is made on the further ground that Brown’s threatened release of Perry’s recorded vocal performances would violate Perry’s exclusive copyrights in his recorded vocal performances and irreparably harm Perry.”

2018 Comeback

There had been a hiatus of several years in Perry’s career. But on Oct. 5, 2018, a new solo album of his, “Traces,” was released, which was to become sixth in popularity in the U.S.

Four days after its issuance, Brown asserted an ownership interest in the home recordings, as he had, briefly, in 2002.

Publicity was launched for Brown’s forthcoming CD which was to include those recordings. Brown’s manager, Brenda Bann, on Oct. 23, 2018, tweeted:

“BROWN’ NEW CD’s almost completed! The NEW band APACHES FROM PARIS is coming together with OUTSTANDING musicians who are well known in the music world! There is an extra little heat in the works for those of you who like Steve Perry!”

Here’s a subsequent tweet:



That’s Brown on the left, Perry on the right.

A 35-second audio “snippet” was, in fact, posted Nov. 1, 2018 on a Facebook page, though removed by Facebook, upon Perry’s demand, about a week later.

Brown’s Contention

Brown contended that he “has at all times maintained both creative and physical control over the Brown/Perry songs,” reasoning:

“As such, under long-standing controlling authority, Brown had, and continues to have, the right to independently license, sell, perform, or otherwise monetize the four Brown/Perry songs without the consent of his co-author, Perry, so long as Brown later accounts to Perry for Perry’s portion of any resultant proceeds.”

The TRO barred:

“(1) Using the registered mark and name ‘Steve Perry,’ the likeness of Steve Perry, any confusingly similar variant of the foregoing, or any other aspect of the mark, name, voice, likeness, or other indicia of identity of Plaintiff Stephen Perry, to promote Defendant, Defendant’s music, Defendant’s musical group ‘Apaches from Paris,’ Defendant’s announced upcoming musical album, business, or in any other manner infringe Plaintiff’s trademarks, rights of publicity and other rights: and

“(2) releasing, posting, publishing, or in any other manner making public any vocal performance of Plaintiff Stephen Perry recorded at Defendant’s home in the early 1990s or at any other time.”

Ninth Circuit Decision

The Ninth Circuit’s memorandum opinion says that Walter’s “extension of the TRO for three months over Brown’s objection, without issuing findings of fact and conclusions of law, was procedurally improper,” citing a federal rule of civil procedure. The opinion continues:

“While this appeal was pending, however, the parties stipulated to extend the TRO and stay the case and the preliminary-injunction hearing pending this appeal….We thus remand for a proper hearing on the application for a preliminary injunction but decline to vacate the TRO in the interim”

The opinion also says that California’s long-arm statute was properly applied because Brown directed his actions at the state in using the name and likeness of Perry, a California resident, in publicity, collaborated on songs here, recorded them here, and entered into a contract here, and because he failed to show a compelling reason to shift the litigation to Tennessee.

Ant-SLAPP Motion

It affirms the denial of Brown’s anti-SLAPP motion in response to a right-of-publicity claim under California law. It does not examine, as California courts would, whether the action is based on protected speech and, if so, whether the plaintiff can show a probability of prevailing on the merits but, rather, declares that there is a triable issue of fact, the inquiry in summary judgment cases.

The opinion says:

“Here, there is a factual issue as to whether Brown created the false impression that Perry has endorsed Brown’s band. That issue prevents Brown from prevailing as a matter of law.”

It cites a 1995 California Court of Appeal decision from the Sixth District, Montana v. San Jose Mercury News, Inc., which affirms a summary judgment and does not involve an anti-SLAPP motion.

Comprising the Ninth Circuit’s panel were Circuit Judges Kim Wardlaw and Andrew Hurwitz, joined by District Court Judge Joseph F. Bataillon of the District of Nebraska, sitting by designation.

The case is Perry v. Brown, 19-55411.


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