                                 Illinois Official Reports

                                        Appellate Court



                         In re Estate of Brown, 2014 IL App (1st) 122857



Appellate Court            In re ESTATE OF JOE BROWN, Deceased (Barbara Hoy,
Caption                    Claimant-Appellant, v. Michael Brown, Respondent-Appellee).


District & No.             First District, Sixth Division
                           Docket No. 1-12-2857


Filed                      June 20, 2014


Held                       In an action arising from a dispute over the ownership of the copyright
(Note: This syllabus to a popular song between persons claiming an interest in the property,
constitutes no part of the including claimant, who was the granddaughter of one co-writer, and
opinion of the court but the son of the person who owned the company to which claimant’s
has been prepared by the grandfather allegedly assigned his rights to the song, the trial court
Reporter of Decisions abused its discretion in dismissing a petition for citation filed under
for the convenience of section 16-2 of the Probate Act on the ground that claimant was guilty
the reader.)               of laches, since the six-week delay between the time claimant learned
                           that the copyright interest was included in the estate of the alleged
                           assignee and the date she filed her petition was not so unreasonable as
                           to bar her claim based on laches; furthermore, there were issues as to
                           whether claimant’s father ever validly assigned his copyright interests
                           and, if so, whether those interests expired at the end of the initial term,
                           and, therefore, the cause was remanded to the probate court for further
                           proceedings.




Decision Under             Appeal from the Circuit Court of Cook County, No. 2009-P-2987; the
Review                     Hon. John J. Fleming, Judge, presiding.



Judgment                   Reversed and remanded with directions.
     Counsel on                  J. Ryan Hinshaw, of Chicago, for appellant.
     Appeal
                                 Steven O. Hamill, of Law Offices of Steven O. Hamill, of Evergreen
                                 Park, for appellee.




     Panel                       JUSTICE HALL delivered the judgment of the court, with opinion.
                                 Presiding Justice Rochford and Justice Reyes concurred in the
                                 judgment and opinion.



                                                   OPINION

¶1         This appeal involves two competing claims of copyright ownership in the musical
       composition “On the Road Again,” a popular blues song.1 The copyright dispute is between
       Michael Brown, in his capacity as the independent administrator of the estate of his deceased
       father, Joe Brown, and Barbara Hoy, as successor-in-interest to her grandfather, Floyd Jones,
       also deceased.2 Barbara Hoy appeals from an order of the probate court of Cook County
       dismissing her amended petition for citation brought pursuant to section 16-2 of the Probate
       Act of 1975 (755 ILCS 5/16-2 (West 2008)) to recover the musical composition, alleged to
       be the property of Joe Brown’s estate. For the reasons that follow, we reverse and remand.
¶2         The late Joe Brown was a blues musician and founder of three Chicago record labels,
       including the Lawn Music Company (Lawn Music). During the 1940s and 1950s the record
       labels were engaged in the business of creating, recording, producing and publishing music.
       The late Floyd Jones was a blues musician and songwriter. In 1952, Floyd Jones co-wrote the
       original musical composition and lyrics for the song “On the Road Again.”
¶3         In 1952 or 1953, Floyd Jones assigned his rights, title and interest in the musical
       composition to Lawn Music. In 1964, Lawn Music and the Frederick Music Company
       (Frederick Music) entered into a licensing agreement granting Frederick Music an exclusive
       license to publish, sell, and produce music from Lawn Music’s catalogue, including the
       musical composition at issue, in exchange for royalties.
¶4         On September 16, 1968, Frederick Music filed a copyright registration application
       identifying Lawn Music as the owner of the copyright in the musical composition “On the
       Road Again.” This version of the musical composition became known as the Lawn version


             1
             The background facts are taken from the parties’ briefs, the record submitted on appeal, the
       complaint filed in Lawn Music Co. v. Liberty Records, Inc. (S.D.N.Y. Oct. 6, 1969 ), and from the
       memorandum opinion and order in Estate of Brown v. ARC Music Group, 830 F. Supp. 2d 501 (N.D.
       Ill. 2011).

             2
              Joe Brown died intestate on February 7, 1976. Floyd Jones died intestate on December 19, 1989.

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       (copyright registration No. Ep 249982). The application listed Floyd Jones and Allen Wilson
       as co-authors.
¶5         About three months later, on December 12, 1968, the Metric Music Company (Metric
       Music) filed a copyright registration application identifying itself as the owner of the
       copyright in a version of the musical composition “On the Road Again” (copyright
       registration No. Eu 89256) that was alleged to have been substantially copied from the Lawn
       version. The application listed Metric Music as the author and employer for hire of “Alan
       Wilson.”
¶6         On October 6, 1969, Floyd Jones, Joe Brown, Lawn Music and Frederick Music filed a
       federal lawsuit against Liberty Records, Inc., and Metric Music, in the United States District
       Court for the Southern District of New York, alleging, among other things, copyright
       infringement of the musical composition “On the Road Again.” See Lawn Music Co. v.
       Liberty Records, Inc. (S.D.N.Y. Oct. 6, 1969).
¶7         Thereafter, in 1970, the parties to the federal lawsuit entered into a settlement agreement
       under which Metric Music assigned to Lawn Music, “one-half (½) of its right, title and
       interest in and to the Composition [On the Road Again] including the copyright therein
       (Registration Nos. EU 89256, EU 98008) for the full original term of copyright and for the
       renewal terms of copyright and any extensions thereof to the extent controlled by Metric.”
       The assignment listed Floyd Jones and Allen Wilson as co-authors of the musical
       composition. In addition, the 1970 agreement provided that the “Lawn version of the
       Composition shall not be affected by this agreement and Lawn and Frederick shall be entitled
       to exercise rights with respect thereto to the fullest extent to which they are entitled under the
       Copyright Laws without regard to this agreement.”
¶8         On September 1, 1972, the parties entered into a stipulation to discontinue the federal
       action “with prejudice, without costs to either party as against the other.”
¶9         Joe Brown died intestate on February 7, 1976. Floyd Jones died intestate on December
       19, 1989. Jones’s estate passed to Ora-Mae Goggins as his sole heir under the laws of
       intestacy.
¶ 10       On February 6, 1996, Ms. Goggins filed a copyright renewal registration for the Lawn
       version of the musical composition. Ms. Goggins died intestate on March 27, 2004, leaving
       her daughter, claimant Barbara Hoy, as her sole heir.
¶ 11       On May 22, 2009, Michael Brown was appointed independent administrator of the estate
       of his deceased father, Joe Brown. Michael Brown filed an inventory of the estate, listing
       among its property the musical composition “On the Road Again,” as follows:
               “One-half (½) of all rights, title and interests throughout the world for the full original
               and renewal terms of the copyright and any extensions thereof in and to the
               composition: ‘On the Road Again/Dark Road’ (assignment number V1433P251,
               dated October 1, 1970), as set forth in the settlement agreement of LAWN MUSIC
               COMPANY vs. LIBERTY RECORDS, INC., now known as Liberty/UA Inc.) and
               METRIC MUSIC COMPANY, INC., case number 69 CV 4375, U.S. District Court for
               the Southern District of New York.”
¶ 12       On June 24, and July 8, 2010, the Chicago Daily Law Bulletin published notice of Joe
       Brown’s death and the administration of his estate. On August 3, 2010, Barbara Hoy filed a



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       claim against the estate objecting to the musical composition “On the Road Again,” being
       included in the inventory of the estate.
¶ 13       On September 27, 2010, Barbara Hoy filed a petition for citation under section 16-2 of
       the Probate Act of 1975 (755 ILCS 5/16-2 (West 2008)), claiming an ownership interest in
       the musical composition and asserting that the composition should not be included in the
       inventory of Joe Brown’s estate. Michael Brown responded by filing a motion to dismiss the
       petition pursuant to section 2-619(a)(1) (lack of subject matter jurisdiction) and section 2-615
       (failure to state a claim upon which relief can be granted) of the Code of Civil Procedure
       (Code) (735 ILCS 5/2-619(a)(1), 2-615 (West 2010)).
¶ 14       The probate court granted the motion to dismiss in part and denied it in part. Barbara Hoy
       was granted leave to file an amended petition for citation, which she filed on June 29, 2011.
¶ 15       Following several motions and hearings, the probate court granted Michael Brown’s
       motion dismissing the amended petition for citation on res judicata grounds pursuant to
       section 2-619(a)(4) of the Code. The probate court found that the 1970 settlement agreement
       had res judicata effect precluding the relief requested in Barbara Hoy’s amended petition for
       citation. The probate court determined that the 1970 settlement agreement was binding
       between Barbara Hoy’s predecessor-in-interest and the decedent Joe Brown, in regard to the
       musical composition at issue, “On the Road Again.” In addition, the probate court found that,
       in the alternative, sua sponte, the claims in Barbara Hoy’s amended petition for citation were
       barred by laches. This appeal followed. For the reasons that follow, we reverse and remand.

¶ 16                                           ANALYSIS
¶ 17       Barbara Hoy’s amended petition for citation was dismissed pursuant to section
       2-619(a)(4) of the Code on the basis of the alleged res judicata effect of the 1970 settlement
       agreement. A motion to dismiss under section 2-619 of the Code admits the legal sufficiency
       of the pleading but asserts an affirmative defense or other matter that avoids or defeats the
       claim. Barber v. American Airlines, Inc., 241 Ill. 2d 450, 455 (2011). Section 2-619(a)(4) of
       the Code permits a defendant to file a motion for dismissal on the basis that the cause of
       action is barred by a prior judgment, i.e., res judicata. See Illinois Non-Profit Risk
       Management Ass’n v. Human Service Center of Southern Metro-East, 378 Ill. App. 3d 713,
       719 (2008) (noting that section 2-619(a)(4) of the Code incorporates the doctrine of
       res judicata). Our review of a dismissal under section 2-619 of the Code is de novo. DeLuna
       v. Burciaga, 223 Ill. 2d 49, 59 (2006).
¶ 18       Michael Brown contends on appeal that Barbara Hoy’s amended petition for citation was
       properly barred not only by the res judicata effects of the settlement agreement of 1970, but
       also by the settlement agreement’s collateral estoppel effects. We must disagree.
¶ 19       “A prior judgment may have preclusive effects in a subsequent action under both
       res judicata and collateral estoppel.” Nowak v. St. Rita High School, 197 Ill. 2d 381, 389
       (2001). “The doctrine of res judicata provides that a final judgment on the merits rendered by
       a court of competent jurisdiction bars any subsequent actions between the same parties or
       their privies on the same cause of action.” Rein v. David A. Noyes & Co., 172 Ill. 2d 325, 334
       (1996). The prior judgment acts as a bar to the entire subsequent suit on the same cause of
       action. The doctrine bars not only what was actually decided in the first action but also
       whatever could have been decided in that suit. Id. at 334-35. Three requirements must be met
       for res judicata to apply: (1) there was a final judgment on the merits rendered by a court of

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       competent jurisdiction; (2) there was an identity of cause of action; and (3) there was an
       identity of parties or their privies. Id. at 335. The party seeking to invoke the defense of
       res judicata bears the burden of demonstrating that it applies. Diversified Financial Systems,
       Inc. v. Boyd, 286 Ill. App. 3d 911, 915 (1997).
¶ 20       Collateral estoppel differs from res judicata in that estoppel prevents parties to the first
       action and their privies from relitigating issues actually litigated in the first proceeding, not
       as to matters which might have been litigated. Northern Illinois Medical Center v. Home State
       Bank of Crystal Lake, 136 Ill. App. 3d 129, 143 (1985). “Collateral estoppel bars the trial of
       an issue that has been fairly and completely resolved in a previous proceeding.” LaSalle Bank
       National Ass’n v. Village of Bull Valley, 355 Ill. App. 3d 629, 635 (2005). In order to apply
       collateral estoppel, three requirements must be met: (1) the issue decided in the prior
       adjudication must be identical to the issue in the current action; (2) the party against whom
       estoppel is asserted must have been a party or in privity with a party in the prior action; and
       (3) the prior adjudication must have resulted in a final judgment on the merits. Mabie v.
       Village of Schaumburg, 364 Ill. App. 3d 756, 758 (2006).
¶ 21       Courts in Illinois are split over whether a dismissal with prejudice pursuant to a
       settlement agreement operates as a final judgment on the merits for purposes of res judicata.
       See Jackson v. Callan Publishing, Inc., 356 Ill. App. 3d 326, 340 (2005) (noting the split of
       authority). Regardless of the split of authority, we find that the 1970 settlement agreement
       does not have preclusive effect, under either the doctrine of res judicata or collateral
       estoppel, on Barbara Hoy’s amended petition for citation.
¶ 22       In her amended petition for citation, Barbara Hoy alleged that Joe Brown and/or Lawn
       Music never obtained a valid assignment from Floyd Jones of his copyright interests in the
       musical composition “On the Road Again,” and that even if they had obtained such an
       assignment, the renewal rights in the musical composition vested in the heirs of Floyd Jones
       and not in Joe Brown and/or Lawn Music. Barbara Hoy alleged that as an heir of Floyd
       Jones, she had an ownership interest in the musical composition and asserted that the
       composition should not be included in the inventory of Joe Brown’s estate.
¶ 23       These issues and allegations were neither raised nor litigated in the federal action. The
       federal action was primarily concerned with whether Liberty Records, Inc., and Metric Music
       infringed on Floyd Jones’s and Joe Brown’s copyright interests in the musical composition
       “On the Road Again.” The issues at the heart of Barbara Hoy’s amended petition for citation
       were not and could not have been presented in the prior federal action because Floyd Jones
       was still alive at the time the federal action was settled and a stipulation to discontinue the
       federal action “with prejudice, without costs to either party as against the other” was entered.
¶ 24       Collateral estoppel does not apply where the party against whom the prior decision is
       asserted did not have a full and fair opportunity to litigate the issue in the prior action. Allen
       v. McCurry, 449 U.S. 90, 95 (1980). In addition, it is a well-settled principle of law that a
       prior judgment “cannot be given the effect of extinguishing claims which did not even then
       exist and which could not possibly have been sued upon in the previous case.” Lawlor v.
       National Screen Service Corp., 349 U.S. 322, 328 (1955); see also County of Kane v. Randall,
       194 Ill. App. 3d 1029, 1036 (1990) (doctrine of res judicata did not prevent trial court from
       considering constitutionality of Public Labor Relations Act, where dispute involving
       application of the Act did not exist at the time of the prior court proceeding and could not
       have been decided at that time).

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¶ 25        “The rule in Illinois is that res judicata extends only to the facts and conditions as they
       were at the time a judgment was rendered. When new facts or conditions intervene before a
       second action, establishing a new basis for the claims and defenses of the parties respectfully,
       the issues are no longer the same, and the former judgment cannot be pleaded as a bar in a
       subsequent action.” Northern Illinois Medical Center, 136 Ill. App. 3d at 144. This principle
       is equally applicable to the doctrine of collateral estoppel. Id. Here, the doctrines of
       res judicata and collateral estoppel are not applicable and do not bar Barbara Hoy’s amended
       petition for citation.
¶ 26        Next, we disagree with the probate court’s sua sponte finding that Barbara Hoy’s
       amended petition for citation is barred by laches. “Laches is an equitable principle which
       bars an action where, because of delay in bringing suit, a party has been misled or prejudiced
       or has taken a course of action different from that which it might have otherwise taken absent
       the delay.” Patrick Media Group, Inc. v. City of Chicago, 255 Ill. App. 3d 1, 7 (1993). The
       determination of whether laches applies to a particular set of facts is left to the sound
       discretion of the trial court. Lozman v. Putnam, 379 Ill. App. 3d 807, 822 (2008).
¶ 27        In order to prevail on the affirmative defense of laches, a defendant must establish: (1)
       plaintiff’s lack of due diligence in bringing suit; and (2) prejudice to the defendant as a result
       of the delay. Mo v. Hergan, 2012 IL App (1st) 113179, ¶ 36. For laches to apply, a plaintiff
       must have knowledge of his right but fail to assert it in a timely manner. Bill v. Board of
       Education of Cicero School District 99, 351 Ill. App. 3d 47, 54 (2004). “A mere lapse in time
       from the accrual of a cause of action to the filing of a lawsuit is insufficient to support a
       laches defense.” Madigan ex rel. Department of Healthcare & Family Services v. Yballe, 397
       Ill. App. 3d 481, 493 (2009). “ ‘The party asserting estoppel [through laches] must show
       prejudice or hardship rather than mere passage of time and must demonstrate that the delay
       induced him to adversely change his position.’ ” La Salle National Bank v. Dubin Residential
       Communities Corp., 337 Ill. App. 3d 345, 351 (2003) (quoting Gersch v. Department of
       Professional Regulation, 308 Ill. App. 3d 649, 661 (1999)).
¶ 28        In this case, the record shows Barbara Hoy filed her initial claim against Joe Brown’s
       estate on August 3, 2010, approximately six weeks after she was put on constructive notice
       and named in a notice of administration of the estate published in the Chicago Daily Law
       Bulletin. We do not believe the six-week delay between the time Barbara Hoy discovered the
       musical composition was being included in the inventory of Joe Brown’s estate and when she
       filed her claim against the estate was so unreasonable as to bar her claim on the basis of
       laches. We therefore find the probate court abused its discretion in dismissing Barbara Hoy’s
       amended petition for citation on the ground that she was guilty of laches.
¶ 29        Finally, Barbara Hoy contends that Michael Brown failed to present any evidence that
       Joe Brown and/or Lawn Music ever obtained a valid assignment from Floyd Jones of his
       copyright interests in the musical composition “On the Road Again,” and that even if they
       had obtained such an assignment, the rights lapsed in 1996 at the expiration of the
       composition’s initial copyright term. Barbara Hoy maintains that because Lawn Music has no
       ownership interest or continuing rights to the musical composition, the probate court erred by
       failing to remove the composition from the inventory of Joe Brown’s estate.
¶ 30        We believe these issues should be addressed and resolved in the first instance by the
       probate court on remand. Accordingly, we decline the invitation to address them at this time.


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¶ 31      For the foregoing reasons, we reverse the judgment of the probate court dismissing
       Barbara Hoy’s amended petition for citation and remand the cause to the court for further
       proceedings consistent with this opinion.

¶ 32      Reversed and remanded with directions.




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