MANHATTAN (CN) – Justin Timberlake may owe royalties to a 1970s soul trio, the Second Circuit ruled Wednesday, after sampling their song “Sho’ Nuff” for his track “Suit & Tie.”
Three former members of the group Sly Slick & Wicked brought their suit for damages in 2016. Timberlake was not the only pop singer to sample “Sho’ Nuff” for a pop song three years earlier, however, and John Wilson, Terrance Stubbs and Charles Still also accused J. Cole of failing to pay royalties for the use of their song in “Chaining Day.”
Though U.S. District Judge Paul Engelmayer dismissed their copyright claims as untimely last year, the Second Circuit decision reversed 3-0 Wednesday.
Engelmayer “reasoned that the claims were time‐barred because the defendants had repudiated plaintiffs’ claims of copyright ownership many years earlier, during the initial copyright terms,” U.S. Circuit Judge Pierre Leval wrote for the Manhattan-based federal appeals court.
Calling this decision erroneous, however, Leval said that a repudiation of claims with respect to the original terms does not necessarily constitute a repudiation of the renewal terms.
Lita Rosario, a Washington, D.C.-based attorney for the plaintiffs, said in a phone interview this afternoon that she believes they still have “a very strong winnable case,” one that is important for many other artists seeking to claim ownership of pre-1978 recordings.
The pre-1978 qualifier refers to Section 304 of the Copyright Act applies to copyrights in their first term on Jan. 1, 1978, and establishes that authors who are still living when the original 28‐year copyright term expires “shall be entitled to a renewal and extension of the copyright in such work for a further term of 67 years.”
Sly, Slick and Wicked’s 1973 single “Sho’ Nuff” was released on People Records, a label was set up in 1971 by soul-funk icon James Brown, who is also credited as the track’s co-producer.
The record label listed Perrell and Brown as the producers and Polydor, successor‐in‐interest to People Records and predecessor‐in‐interest to Universal Music Group Inc., as copyright owner for the sound recording.
Prolific soul producer Bert “Super Charts” DeCoteaux handled the arrangement of “Sho’ Nuff,” and it was recorded by Bob Both, a longtime Polydor recording engineer with many credits for James Brown and his stable of artists.
The success of the “Sho Nuff” single led to an invitation from Don Cornelius to appear on “Soul Train.”
According to the 2016 complaint, which Stubbs joined after it was filed, Wilson and Still filed a registration for “Sho Nuff” with the U.S. Copyright Office on May 12, 1973.
The singers claim that they never executed any written agreements with either “Sho Nuff” co-producer Eddie Perrell or People Records that included a “work-for-hire” provision, and never transferred their renewal term copyrights to either Perrell or People Records.
UMG registered a renewal term copyright in the sound recording of “Sho Nuff” with the U.S. Copyright Office on Dec. 21, 2001. The label is the successor to Polydor Records, which acquired People Records when the label’s founder, James Brown, signed with Polydor in 1971.
The singers filed a renewal registration in the Copyright Office asserting ownership of the renewal term for the composition on Nov. 19, 2015.
Judges Guido Calabresi and Jose Cabranes concurred in Leval’s ruling.
Sly, Slick and Wicked were formed in 1970 in Cleveland, Ohio. The group’s founding members were John “Sly” Wilson, Charles “Slick” Still and Marc “Wicked” Sexton; later on co-plaintiff Terry Stubbs would replace Sexton as the “Wicked” member.
Timberlake’s “Suit & Tie” sold more than 3 million units in the United States alone, achieved platinum status in numerous other countries, and received more than 92 million YouTube views.
Last February, Timberlake performed “Suit and Tie” during the Super Bowl LII halftime show.