Case 3:16-cv-00938-AC

Document 1

Filed 05/27/16

Page 1 of 6

Elizabeth Tedesco Milesnick, OSB No. 050933

elizabeth.milesnick@millernash.com
Andrea M. Barton, OSB No. 092760
andrea.barton@millernash.com
MILLER NASH GRAHAM & DUNN LLP
3400 U.S. Bancorp Tower
111 S.W. Fifth Avenue
Portland, Oregon 97204
Telephone: 503.224.5858
Facsimile: 503.224.0155
Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON
PORTLAND DIVISION
KEVIN T. SEGURA, an individual,
dba SHINY VINYL MUSIC,

Case No.
COMPLAINT FOR
COPYRIGHT INFRINGEMENT

Plaintiff,
v.
SOFA ENTERTAINMENT, INC., a California
corporation; and DIRECT HOLDINGS
AMERICAS INC., a Delaware corporation,
dba STARVISTA LIVE and TIMELIFE,
Defendants.

Plaintiff Kevin T. Segura, dba Shiny Vinyl Music ("SVM") alleges as follows:
INTRODUCTION
1.

This is an action for copyright infringement brought under the Federal

Copyright Act of 1976, 17 USC 101, et seq.

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Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-00938-AC

2.

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SVM is the owner and publisher of the musical composition "Vagabonds

Theme," previously known as "Vagabond Theme" or "Vagabond Hop" (the "Song"). SVM is
currently the only entity authorized to issue synchronization licenses for use of the Song in
videograms. SVM retroactively granted defendant Sofa Entertainment, Inc. ("Sofa") such a
license for the period between May 10, 2007 and December 31, 2012, for use of the Song on a
prior occasion. Despite its awareness of SVM's rights and the process for licensing the Song, as
evidenced by a previous videoprogram synchronization and videogram license agreement, Sofa
and defendant Direct Holdings Americas Inc., dba StarVista Live and TimeLife, ("TimeLife")
(together with Sofa, the "Defendants"), intentionally violated SVM's copyright and refused
demands to cease the infringement.
JURISDICTION AND VENUE
3.

This Court has subject matter jurisdiction over this matter pursuant to

28 USC 1331 and 1338(a). This Court independently has diversity jurisdiction over this
matter because SVM, Sofa, and TimeLife are all citizens of different states and the amount in
controversy exceeds $75,000, excluding interest and costs.
4.

This Court has personal jurisdiction over Sofa and TimeLife because of

Defendants' willful infringement of a copyright held by an Oregon state resident, as more fully
described below.
5.

This district is a proper venue pursuant to 28 USC 1391(b) and 1400(a)

because a substantial part of the events or omissions giving rise to SVM's claims occurred in this
district.

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Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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THE PARTIES
6.

SVM is as assumed business name of Kevin T. Segura, an individual

residing in the state of Oregon, at 20367 Noble Lane, West Linn, Oregon 97068.
7.

On information and belief, defendant Sofa is a corporation organized and

existing under the laws of the state of California, having its principal place of business at
9121 Sunset Boulevard, Los Angeles, California 90069.
8.

On information and belief, defendant TimeLife is a corporation organized

and existing under the laws of the state of Delaware, having its principal place of business at
8260 Willow Oaks Corporate Drive, Suite 500, Fairfax, Virginia 22031.
FACTUAL ALLEGATIONS
9.

The Song was originally created by Robert Saffer and Frank Linale.

10.

SVM acquired all rights to the Song in 2007, pursuant to a validly

executed copyright assignment.

11.

SVM subsequently applied for and was granted a Certificate of

Registration for the Song from the U.S. Copyright Office (Certificate of Registration
No. PA 1-778-360), attached hereto as Exhibit 1.
12.

At all times since acquiring the rights to the Song, SVM has complied

with all federal laws governing copyrights and is currently the owner of all rights, title, and
interest in and to the copyright for the Song.
13.

In 2007, SVM became aware that Sofa had been using the Song in a

program entitled "Elvis Presley: The Ed Sullivan Shows September 9, 1956," (the "Program")
which it was selling on video cassettes, videotapes, video discs, and similar compact and

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Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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audiovisual devices, including digital downloading and streaming, without license or authority.
On July 29, 2012, SVM and Sofa negotiated a Videoprogram Synchronization and Videogram
License Agreement (the "Agreement"), which applied retroactively to the period from May 10,
2007 through December 31, 2012, and allowed Sofa to continue to produce and sell its remaining
inventory of the Program. The Agreement expressly prohibited the creation of any new copies of
the Program containing the Song after December 31, 2012, unless an extension was negotiated
for additional consideration. None ever was.
14.

In early 2016, SVM became aware that TimeLife was selling a DVD

product entitled "Elvis The First Ed Sullivan Show" (catalog #30756-X) (the "Video"), which
contained an unlicensed use of the Song. SVM immediately contacted TimeLife to notify it in
writing of the copyright infringement, request further information about the Video, and offer to
negotiate a retroactive license similar to the one previously entered into with Sofa.
15.

In response, TimeLife informed SVM that the music clearances for the

Video were conducted by Sofa and requested that Sofa respond to SVM's written notice.
16.

After a single e-mail from a Sofa representative promising to check into

the issue, Sofa has not responded to SVM's communications. TimeLife, likewise, has neither
meaningfully responded to SVM's notifications nor removed the infringing product.
17.

The Video is currently available for sale online at TimeLife's website,

Timelife.com, and can be shipped anywhere in the United States, including Oregon. The film is
also available for purchase in the state of Oregon through a number of distributors. For example,
Amazon.com, a company based in the Pacific Northwest, sells the Video as part of a DVD
package format to customers in Oregon and throughout the United States.

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Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

Case 3:16-cv-00938-AC

18.

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Defendants have paid no compensation to SVM for their unauthorized use

of the Song in the Video, despite their awareness of SVM's rights and SVM's reasonable
attempts to negotiate a resolution. Defendants have therefore knowingly and willingly infringed
SVM's copyright.
CLAIM FOR RELIEF
(Willful Copyright Infringement Under 17 USC 101, et seq.)
19.

SVM incorporates the allegations of the foregoing paragraphs as though

fully set forth herein.

20.

SVM is the exclusive holder of the copyright in the Song.

21.

As copyright holder, SVM has the exclusive rights to the reproduction,

derivative works, distribution, public performance, or public display of the Song.

22.

By selling copies of the Video that include the Song, Defendants are

infringing one or more of these exclusive rights.

23.

Defendants' conduct, including, but not limited to, using the Song after

they have been made aware of SVM's copyright interests, either through an earlier licensing
agreement or communications with SVM, constitutes willful copyright infringement.
24.

As a direct and proximate result of Defendants' willful infringement as

described above, SVM has suffered and continues to suffer damages to its profits, royalties,
sales, and business. SVM is therefore entitled to relief, including injunctive relief, recovery of
costs and reasonable attorney fees, and statutory damages under the Federal Copyright Act.

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Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4

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Filed 05/27/16

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PRAYER FOR RELIEF

WHEREFORE, SVM respectfully requests the following relief:
1.

An Order preliminarily and permanently enjoining Defendants, and their

respective agents, servants, employees, officers, successors, licensees and assigns, and all
persons acting in concert or participation with each or any of them, from continuing to infringe
SVM's registered copyright in the Song;
2.

A judgment against Defendants for $150,000.00 in statutory damages

under the Federal Copyright Act for their willful infringement in using the Song in the Video;
3.

SVM's reasonable costs and attorney fees incurred in this action; and

4.

Any such other and further relief as this Court may deem just and

equitable.
DATED this 27th day of May, 2016.
MILLER NASH GRAHAM & DUNN LLP

s/ Elizabeth Tedesco Milesnick

Elizabeth Tedesco Milesnick, OSB No. 050933
elizabeth.milesnick@millernash.com
Andrea M. Barton, OSB No. 092760
andrea.barton@millernash.com
3400 U.S. Bancorp Tower
111 S.W. Fifth Avenue
Portland, Oregon 97204
Telephone: (503) 224-5858
Fax: (503) 224-0155
Attorneys for Plaintiff Shiny Vinyl Music

Page 6 70101142.3

Complaint for Copyright Infringement

MILLER NASH GRAHAM & DUNN LLP
AT T OR NE YS AT L AW
T E LE P H ONE : 5 0 3 . 2 2 4 . 5 8 5 8
3 4 0 0 U. S. B AN CO RP T OW E R
1 1 1 S.W . FI FT H AVE N UE
P ORT L A N D , O RE GO N 9 7 2 0 4