ELLIOTT

v.

WILLIAMS

also known as Missy Elliot,

Plaintiff, v. TERRY WILLIAMS,

Defendant. ____________________________/

ORDER

Melissa Elliot, commonly known as “Missy Elliot,” is a famous singer, songwriter, and recording artist. In our case, though, she’s the Plaintiff, suing Terry Williams, a music producer she rehearsed with in the mid-1990s. At its core, her lawsuit is about ownership—specifically, ownership over the songs she rehearsed at Williams’s home studio in Philadelphia. But we needn’t delve into the merits of this dispute because there’s already a federal judge in Pennsylvania who’s been handling this same case—the same songs, the same Philadelphia studio, the very same personalities—for years. And so, whether under the “first-filed rule” or the transfer statute, 28 U.S.C. § 1404(a), this case must be transferred to the Eastern District of Pennsylvania where it belongs.

BACKGROUND

From 1993 to 1995, Elliot performed with “Sista,” an R&B group. See First Amended Complaint (“FAC”) [ECF No. 9] ¶ 13. In 1994, Sista released an album called⁴ All the Sistas Around Da World, for which Elliot was credited as a songwriter. Id. ¶ 18. In addition to performing and recording with Sista, Elliot also wrote her own lyrics and then rehearsed those lyrics with other artists, producers, and sound engineers. Id. ¶¶ 20–22. To help Elliot hear how her lyrics sounded with musical accompaniment, the producers often played her “sample” (or pre-recorded) beats and allowed her to record herself singing over those arrangements. Id. ¶ 22. The purpose of the sessions, though, was not to wed her lyrics to the producer’s background music; it was, rather, for Elliot to get a sense of the arrangements she preferred and to hear how her lyrics sounded against a musical backdrop. Id. ¶¶ 28, 33–35, 37. Williams was one of the producers Elliot worked with in the mid-1990s. During that time, Elliot “sporadically” visited his home studio in Philadelphia,¹ where she rehearsed her lyrics alongside his sample beats. Id. ¶ 24. Elliot alleges that, while Williams may have used some of his own beats and backtracks during those sessions, many of those beats were samples he hadn’t created. Id. ¶ 25. Elliot also claims that Williams “never contributed to or provided input on [her] independently created lyrics, vocal arrangements and melodies,” that she never entered into any kind of agreement with Williams, and that she never intended to share any authorship rights with him. Id. ¶¶ 27, 29, 38, 39, 41. At some point between 1993 and 1996, Elliot wrote the lyrics to a song called “Heartbroken,” which was eventually recorded by another artist, Aaliyah. Id. ¶¶ 30–31. Elliot ultimately received songwriter credits for eight songs that appeared on Aaliyah’s album—including “Heartbroken.” Id. Twenty years later, in January of 2017, a woman named Constance Gary contacted Elliot’s talent-management company and offered to sell Elliot eight musical tracks on behalf of a “friend.” Id. ¶¶ 44–45. Elliot’s attorneys responded to the solicitation, and Gary later represented to the attorneys that the “friend” was Williams. Id. ¶¶ 45–46. In a subsequent letter, Gary told Elliot’s attorneys that,

just the day before, she’d realized that the chorus in one of the eight tracks was “identical” to the “Heartbroken” chorus. Id. ¶¶ 50–52. In her next few letters, Gary threatened to sue Elliot for copyright infringement and suggested that Elliot should settle the matter “discreetly” as a way of avoiding bad

34 recordings. Id. ¶ 67. On November 14, 2018, Williams sued Elliot (and several others) in Pennsylvania state court, advancing a farrago of state and federal claims—including breach of contract, unjust enrichment, quantum meruit, accounting, constructive trust, and one count under the federal Declaratory Judgment Act. Id. ¶¶ 39–69. Elliot promptly removed the case to the Eastern District of Pennsylvania, where Williams filed an amended complaint, adding federal copyright claims. Id. ¶ 73. Although the court initially dismissed the claims against Elliot, id. ¶ 75, Williams ultimately² obtained leave to file the now-operative Fourth Amended Complaint against Elliot and her co-defendants, see Williams v. Elliot, No. 2:18-cv-05418-NIQA (E.D. Pa. Nov. 16, 2020), ECF No. 91 (the “E.D. Pa. Complaint”). In the E.D. Pa. Complaint—the facts of which should sound familiar—Williams alleges that, from 1993 to 1996, he owned a home music studio in Philadelphia where he often worked with Elliot. Id. ¶¶ 1–2. He adds that he and Elliot “were equal contributors to the writing of lyrics and music, co-producing several songs composed” during that time, and that they recorded several songs on two digital audio tapes. Id. ¶ 3. One of those songs, he claims, was “Heartbroken.” Id. ¶ 4. Williams also avers that the pair had an agreement to share in any profits they earned from the songs they recorded at the studio, and that they, in fact, jointly published and profited from some of those songs. Id. ¶¶ 8–

PROCEDURAL HISTORY

On August⁶, 2020—after Williams’s action had been pending in the Eastern District of Pennsylvania for almost two years—Elliot sued Williams here. See Original Complaint [ECF No. 1].

A month or so later, on September 18, 2020, she filed the operative FAC. In that FAC, Elliot asserts only one count—under the Copyright Act and the federal Declaratory Judgment Act—and asks the Court to declare that she’s the sole author and owner of what she calls the “Unpublished Recordings” (or any other of her unpublished works Williams might possess). FAC ¶¶ 85–100. Williams, proceeding pro se, responded with a Motion to Dismiss or Transfer Plaintiff’s First Amended Complaint (the “Motion”) [ECF No. 12], which is now ripe for adjudication.³ In the Motion, Williams submits three arguments. First, he says that the Court lacks personal jurisdiction over him because he lives in Delaware and the songs at issue were recorded in Philadelphia. Id. at 2. Second, he contends that the FAC should be dismissed both because the allegations are implausible and because the applicable three-year statute of limitations has expired. Id. at 3–7. Third, he argues that the case should be transferred to the Eastern District of Pennsylvania under the auspices of 28 U.S.C. § 1404(a). Id. at 7–9.

THE LAW

When a complaint involving overlapping parties and issues has been filed in another federal district, the “first-to-file” rule creates “a strong presumption” that the case should be heard by the

See Vital Pharms., 2020 WL 6162794, at *1 (“The federal courts have long recognized that the principle of comity requires federal district courts—courts of coordinate jurisdiction and equal rank—to exercise care to avoid interference with each other’s affairs.” (quoting Save Power Ltd. v. Syntek Fin. Corp., 121 F. 3d 947, 950 (5th Cir. 1997))). The rule aims to prevent the needless expenditure of judicial resources and to avoid conflicting rulings. Id. Because the rule bears on the court’s jurisdiction, moreover, the court can (and should) raise it sua sponte. See Aadyn Tech., LLC v. Pro. LED Lighting, Ltd., 2014 WL 12489975, at *3 (S.D. Fla. Dec. 10, 2014) (collecting cases and explaining that, “[b]ecause the first-filed doctrine involves a court’s exercise of jurisdiction, a court may (and indeed, should) raise the issue sua sponte”); see also QVC, Inc. v. Patiomats.com, LLC, 2012 WL 3155471, at *2–3 (E.D. Pa. Aug.³, 2012) (addressing the first-to-file rule on a motion to transfer under § 1404(a), even though “the parties’ briefs failed to mention the first-filed rule”). Notably, the first-to-file rule doesn’t require that “the parties and issues involved be identical”;

it requires only that “they are sufficiently similar or substantially overlap.” Vital Pharms., 2020 WL 6162794, at *1 (citing Manuel, 430 F. 3d at 1135); see also Save Power, 121 F. 3d at 950 (“The rule does not . . . require that cases be identical. The crucial inquiry is one of ‘substantial overlap.’”). Courts should transfer to the first-filed district unless “considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise.” Supreme Int’l Corp. v. Anheuser-Busch, Inc., 972 F. Supp. 604, 606 (S.D. Fla. 1997) (quoting Serco Servs. Co., L.P. v. Kelley Co., 51 F. 3d 1037, 1039 (Fed. Cir. 1995)). “A transfer of a case under the first-filed rule does not depend on the presence or absence of 28 U.S.C. § 1404(a) considerations.” Savage v. Seterus, Inc., 2020 WL 230982, at *3 (S.D. Fla. Jan. 15, 2020).

ANALYSIS

Although neither party raised the first-to-file rule, this Court can—and should—invoke the rule sua sponte. See Aadyn Tech., 2014 WL 12489975, at *3. And the rule unambiguously justifies a transfer here. Our case, after all, is virtually identical to the first-filed action that’s been pending for years in the Eastern District of Pennsylvania. Not only are both of our parties involved in that lawsuit, but both cases implicate substantially overlapping questions of fact and law—primarily regarding the nature of the parties’ professional relationship, the ownership of the disputed songs, the potential existence of a contract governing those songs, and the purpose of the studio sessions that took place in Williams’s home in the mid-1990s. Compare E.D. Pa. Complaint ¶¶ 1–15 with FAC ¶¶ 24–41. More granularly, both suits involve a dispute over who owns “Heartbroken” (recorded by Aaliyah) and who has the rights to three songs published by Sista. Compare E.D. Pa. Complaint ¶¶ 4, 24–25 with FAC ¶¶ 18, 30–31. Finally, both suits followed the (ultimately) fruitless correspondence between Gary and Olizi on the one hand and Elliot’s representatives on the other. Compare E.D. Pa. Complaint ¶¶ 23– 25 with FAC ¶¶ 44–67.4

More than that, though, Williams has amended his complaint a fourth time in Pennsylvania. In that Fourth Amended Complaint, he specifically seeks a declaratory judgment that he is “the co-author of the lyrics, vocal arrangements and melodies underlying and embodied within the subject Recordings, in addition to any other recordings the Plaintiff possesses featuring and or cowritten by defendant Elliot.” E.D. Pa. Complaint ¶ 69 (emphasis added). In our case, Elliot likewise wants a declaration that Williams “does not hold an equal undivided interest in the copyright and publishing rights to the lyrics, vocal arrangements or melodies underlying the Unpublished Recordings or underlying any other unpublished recording Defendant Williams possesses or maintains.” FAC ¶ 100(b) (emphasis added). As of Williams’s filing of the Fourth Amended Complaint, then, each case implicates all the recordings—a complete overlap that weighs heavily in favor of transfer. Co. v. Am. Cas. Co. of Reading, Pa., 713 F. 3d 71, 79–80 (11th Cir. 2013)). But Williams’s studio was in Philadelphia, where the parties have (for years) been litigating the same issues Elliot now asks us to adjudicate here. There’s no reason to believe that it would be inconvenient for the parties to continue litigating this case in the E.D. Pa.—especially when one considers the benefits to the judicial system that necessarily flow from consolidating these interrelated questions into one case. On the flip side, this District has little (if any) connection to the controversy, which arose from events that took place in Philadelphia and a professional relationship that was centered (if anywhere) in Pennsylvania. Since the first-to-file rule plainly applies—and given that Elliot cannot show “compelling circumstances”—we needn’t say more. We add only that, even if Elliot’s case had presented compelling circumstances, we would’ve used our discretion to transfer the case under the first-to-file rule anyway. See Supreme Int’l Corp., 972 F. Supp. at 606 (explaining that compelling circumstances “do not automatically compel abandoning the first-filed rule” and noting that “[t]he matter is one of discretion for the trial court,” such that, “even where those [compelling] conditions are present,” the rule is “preferred . . . unless considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise”); Philbert v. Ethicon, Inc., 2005 WL 525330, at *1 (S.D. Fla. Jan. 14, 2005) (“Even where compelling circumstances are present, the first-filed action is preferred even if it is declaratory, unless consideration of judicial and litigant economy, and the just effective [sic] disposition of disputes, require otherwise.”).

*** And that’s where courts often end their analysis—even when, as here, a defendant has asked for transfer under § 1404(a). See, e.g., Steelers Keys, LLC v. High Tech Nat’l, LLC, 2019 WL 6609214, at *3 (S.D. Fla. Dec.⁴, 2019) (“The Plaintiffs assert that the traditional § 1404 factors militate against transfer. The Plaintiffs, however, fail to cite a case in which the first-to-file rule was defeated by a venue analysis under the § 1404 factors. Defendants often move, on an alternative basis, to transfer under § 1404. In such cases, courts decline to address the § 1404 factors when the first-to-file rule is dispositive.”); Lianne Yao v. Ulta Beauty Inc., 2018 WL 4208324, at *1 n.1 (S.D. Fla. Aug. 8, 2018) (“Because transfer is warranted under the first-to-file rule, the Court does not address the parties’ arguments under 28 U.S.C. section 1404(a).”). In the interest of completeness, though, we’ll add a few (brief) observations about § 1404(a). The upshot—as we’ll see in a moment—is that, second-filed or not, we would’ve transferred this case either way.

First, the Eastern District of Pennsylvania is unambiguously a place where the case “might have been brought.” § 1404(a). Indeed, it’s a place where a substantially identical action has already been brought—and Elliot, for her part, wisely doesn’t argue otherwise. See Response at 19–20. Second, even without the first-to-file rule, the E.D. Pa. action would remain relevant to our analysis of the § 1404 factors. See Great Lakes Transp. Holding LLC v. Yellow Cab Serv. Corp. of Fla., Inc., 2012 WL 12930665, at *9 (S.D. Fla. Feb.⁶, 2012) (“After conducting its analysis under 28 U.S.C. § 1404(a), the Court finds that transfer of this action to the Eastern District of Michigan is appropriate. First and foremost, the pending litigation in the Eastern District of Michigan is directly related to the action here. . . . While the factors of Plaintiff’s choice of forum and the ability to compel the testimony of Florida witnesses disfavor transfer, these considerations are outweighed by the other relevant factors and the necessity of consolidating the two interrelated actions.”); Podhurst Orseck, P.A. v. Servicios Legales De Mesoamerica S. De R.L., 699 F. Supp. 2d 1344, 1353 (S.D. Fla. 2010) (transferring a case where the issues in the action were “so intricately intertwined with claims and funds already at issue in [ongoing] Texas litigation” that it would “make no sense, as a matter of judicial economy, for these matters to proceed on a piecemeal basis in two different district courts”). Third, where one court lacks personal jurisdiction over the defendant—or where the case presents difficult questions of personal jurisdiction—courts sometimes transfer under § 1404 rather than dismiss. See Pat. Holder LLC v. Lone Wolf Distribs., Inc., 2017 WL 5032989, at *3 (S.D. Fla. Nov.¹, 2017) (“The Court need not have personal jurisdiction over the Defendants to consider a motion for transfer under either § 1404(a) or § 1406(a).”); Recao v. Bell Helicopter Textron, Inc., 2014 WL 12595302, at *5 (S.D. Fla. Sept. 23, 2014) (“A District Court lacking personal jurisdiction may transfer a case to a District Court in which personal jurisdiction exists, under 28 U.S.C. § 1404(a).” (citation omitted)); 15 CHARLES A. WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE § 3854 (4th ed. Apr. 2021 Update) (“[S]ome courts have concluded that it conserves judicial resources, and furthers the interests of the parties, to transfer a case from a forum in which there is a difficult question of personal jurisdiction or venue to a district in which there are no such uncertainties.”). Since this Court appears to lack jurisdiction over Williams—and given the pending litigation in the Eastern District of Pennsylvania, where jurisdiction is undisputed⁵—the wiser course would be to transfer this case to that district. The Eleventh Circuit employs a two-step inquiry to determine whether a court may exercise personal jurisdiction over an out-of-state defendant. See Mut. Serv. Ins. Co. v. Frit Indus., Inc., 358 F. 3d 1312, 1319 (11th Cir. 2004). Jurisdiction in this case fails at the first step—application of Florida’s long-arm statute. Id. “When jurisdiction is based on a federal question arising under a statute that is silent regarding service of process, Rule 4(e) of the Federal Rules of Civil Procedure directs us to look to the state long-arm statute to determine the existence of personal jurisdiction.” Sculptchair, Inc. v. Century Arts, Ltd., 94 F. 3d 623, 626–27 (11th Cir. 1996). Elliot’s FAC advances only a single claim under the

Copyright Act, 17 U.S.C. § 101, et seq., and the federal Declaratory Judgment Act, 28 U.S.C. § 2201, et

‘carrying on a business’ in Florida under [FLA. STAT. § 48.193(1)(a)]. We disagree. While sending a letter into Florida could invite specific jurisdiction under § 48.193(1)(b) if the letter itself is tortious, the

628). None of those factors is present here. See generally FAC; Response. One last thing: Elliot’s contention that “[i]ntellectual property infringement has been found to be an intentional tort sufficient to subject a defendant to personal jurisdiction,” Response at 13, makes little sense given that she hasn’t accused Williams of infringing her intellectual property at all. As we’ve said, her FAC contains only one count—for a declaratory judgment. See generally FAC. Either way, for the copyright infringement to have subjected Williams to suit in Florida, he would’ve needed to “conduct[ ] ... activities in Florida that were ‘essential to the success’ of [his] alleged infringementy.]” DeZinno v. McClain Printing Co., 2007 WL 9709709, at *9 (S.D. Fla. Apr. 19, 2007). But, again, other than the demand letters—which weren’t sent to Florida and aren’t relevant in any case—there’s no evidence that Williams did anything in Florida. hoeK After careful review, the Court GRANTS in part and DENIES in part the Motion [ECF No. 12]. Specifically, those portions of the Motion that seek a transfer to the Eastern District of Pennsylvania ace GRANTED. In all other respects, the Motion ts dented without prejudice. Accordingly, the Clerk of Court shall TRANSFER this case to the United States District Court for the Eastern District of Pennsylvania. After that, the Clerk shall CLOSE this case, DENY all other pending motions as moot, and TERMINATE all deadlines. DONE AND ORDERED in Fort Lauderdale, Florida, this 18th day of March 2021. “ac

UNITED STATES DISTRICT JUDGE cc: counsel of record Terry Williams, pro se