Revised July 23, 1999

IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

_____________________

No. 98-30046 

_____________________

DAVID BATISTE; PAUL BATISTE; MICHAEL BATISTE,

Plaintiffs-Appellants-Cross-Appellees,

v.

ISLAND RECORDS INC; ISLAND RECORDS LTD; MCA MUSIC 

PUBLISHING, A Division of MCA, Inc; ATTRELL CORDES,

also known as P M Dawn, doing business as P M Dawn;

WADE FEATHERSTONE, Individually; GEE STREET RECORDS

INC,

Defendants-Appellees-Cross-Appellants

and

ISAAC BOLDEN,

Defendant-Appellee.

_________________________________________________________________

Appeals from the United States District Court

for the Eastern District of Louisiana 

_________________________________________________________________

June 21, 1999

Before KING, Chief Judge, and REAVLEY and BENAVIDES, Circuit

Judges.

KING, Chief Judge:

Attrell Cordes, a successful singer and songwriter who

performs with his brother under the name “P.M. Dawn,” used a

digital sample of a musical composition that was originally

written and recorded by David, Paul, and Michael Batiste. Cordes
2

included the digital sample in a song on a highly successful

album that was released by Island Records, Inc. and Gee Street

Records, Inc., and the Batistes seek damages and injunctive

relief for alleged copyright infringement and violations of the

Lanham Act, 15 U.S.C. § 1125, the Louisiana Unfair Trade

Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419, and Louisiana

state laws regarding conversion and misappropriation. The

district court dismissed the Batistes’ claims against Wade

Featherstone for lack of personal jurisdiction and granted all

defendants except Isaac Bolden summary judgment on all claims,

except Paul and Michael Batiste’s allegations of conversion and

misappropriation, which the court allowed Paul and Michael

Batiste to voluntarily dismiss without prejudice. We affirm the

judgment of the district court in all respects except that we

determine the district court abused its discretion by allowing

Paul and Michael Batiste to dismiss their surviving claims

without prejudice, and we remand with instructions to enter

judgment in favor of all defendants except Bolden on these claims

as well.

I. FACTUAL BACKGROUND

David, Paul and Michael Batiste (collectively, the Batistes)

are three brothers who, while performing together as a group

known as “David Batiste & the Gladiators,” wrote a musical

composition called “Funky Soul” in 1968. The Batistes performed

“Funky Soul” in New Orleans and recorded the song in 1970 with
3

the assistance of Isaac Bolden, a local music publisher and

record producer.

David Batiste, the eldest brother and leader and manager of

the group, entered into two written contracts with Bolden: (1)

a Songwriter’s Contract governing rights to the “Funky Soul”

musical composition, and (2) an Artist Contract governing rights

to the “Funky Soul” physical master tape and sound recording. 

Under the Songwriter’s Contract, David Batiste warranted that the

“Funky Soul” musical composition was his “sole, exclusive and

original work” and transferred that composition, including the

title, words, music, and the exclusive right to secure copyright,

to Bolden. Under the Artist Contract, David Batiste transferred

to Bolden all rights to the physical master tape and the sound

recording of “Funky Soul” embodied thereon, including the

“exclusive, unlimited and perpetual right . . . to manufacture,

advertise, sell, lease, license or otherwise use or dispose of,

in any or all fields of use, by any method now or hereafter

known, throughout the world, records embodying the performances.”

Shortly after the recording session for “Funky Soul,” Bolden

obtained a certificate of copyright registration for the musical

composition identifying David Batiste as its sole writer. Bolden

authorized the manufacture and release of two records containing

“Funky Soul” in 1970, but neither record was a commercial

success.
1 At the time of the events leading to this lawsuit, Island

Records, Inc. and Island Records, Ltd. were both subsidiaries of

Polygram N.V. For the purposes of this opinion, we will refer to

Island Records, Inc., Island Records, Ltd., or both, as Island

Records.

4

Attrell Cordes and his brother perform together in the

highly successful musical group “P.M. Dawn.” In 1992, Cordes

purchased a copy of the “Funky Soul” record and decided to sample

it for use in a song of his own entitled “So On and So On” (“So

On”). Cordes recorded a six and one-half second portion of

“Funky Soul” from the record he purchased and used digital

technology to modify the recording. Cordes used this digital

sample in his song “So On” that was included on “the Bliss

Album,” which Island Records, Inc.1 and its affiliate, Gee Street

Records, Inc. (Gee Street), released on March 15, 1993.

Prior to “the Bliss Album” release, Gee Street determined

that Bolden held all rights to the “Funky Soul” musical

composition and sound recording and entered into three contracts

with him: (1) a Master Recording Sampling License, on January

26, 1993; (2) a Mechanical License Agreement, on March 3, 1993;

and (3) an Administration Agreement, on April 27, 1993. Under

the Master Recording Sampling License, Bolden granted Gee Street

“the non-exclusive right to manufacture [r]ecords embodying that

certain Master Recording, entitled ‘So On & So On’ . . . [which]

contains an interpolation of [Bolden’s] master recording,

entitled ‘Funky Soul.’” Under the Mechanical License Agreement,
5

Bolden consented to Gee Street’s release of “So On,” which

“interpolates a portion of the musical composition entitled

‘Funky Soul.’” Finally, under the Administration Agreement,

Bolden and MCA Music Publishing (MCA) agreed that Bolden owns a

forty percent share of “So On,” and that Bolden “grants licenses

and assigns to [MCA] exclusively the copyright and all other

rights . . . in and to [‘So On’].” In exchange for his allowing

the use of the “Funky Soul” sample, Gee Street paid Bolden a

$15,000 advance against record royalties in February 1993.

The liner notes accompanying “the Bliss Album” credit “D.

Batiste” as a co-writer of “So On” and state that “‘Funky Soul’

performed by David Batiste & The Gladiators [is] used under

license by Isaac Bolden.” The Batistes admit that they learned

that a portion of “Funky Soul” was used in “So On” no later than

July 1993, and that they prepared and submitted an application to

register as co-writers of “So On” with Broadcast Music, Inc., a

well-known performing rights society.

II. PROCEDURAL HISTORY

The Batistes filed this suit in the United States District

Court for the Eastern District of Louisiana on March 10, 1995,

alleging that Island Records, Gee Street, MCA, Cordes, Bolden,

and Wade Featherstone violated federal copyright laws, 17 U.S.C.

§§ 101-603; the Lanham Act, 15 U.S.C. § 1125; the Louisiana

Unfair Trade Practices Law, LA. REV. STAT. ANN. §§ 51:1401-1419

(LUTPL), and Louisiana state laws regarding conversion and
2 Although the district court’s order on September 8, 1997

states that defendants’ motion to dismiss for lack of subject

matter jurisdiction is “granted,” the accompanying opinion offers

no support for this conclusion. In fact, the opinion states that

the Batistes have standing to bring a copyright infringement

claim as beneficial owners of Bolden’s copyright, and the

district court ultimately granted defendants summary judgment on

the copyright claims. Defendants note this inconsistency and

6

misappropriation. In addition, the Batistes allege in their

complaint that Bolden breached his fiduciary duty and contractual

obligation by failing to account for income that he has received

from the sale or distribution of records containing “Funky Soul”

and by participating in the misappropriation of the Batistes’

property and infringement of their copyrights. The Batistes seek

injunctive and declaratory relief, an accounting of all amounts

received from transactions relating to “the Bliss Album” and

“Funky Soul,” and damages.

Wade Featherstone filed a motion on October 15, 1996 to

dismiss the Batistes’ claims for lack of personal jurisdiction

and failure to state a claim upon which relief may be granted. 

Featherstone asserted that he is a citizen and resident of

England and lacked sufficient jurisdictional contacts with the

state of Louisiana. Island Records, MCA, Gee Street, and Cordes

(collectively, defendants) filed a motion on December 6, 1996 to

dismiss the Batistes’ claims of copyright infringement for lack

of subject matter jurisdiction, arguing that the Batistes could

not demonstrate that they had obtained or applied to obtain a

valid copyright registration for “Funky Soul.”2 Defendants also
argue on appeal that if the district court did deny their motion

to dismiss for lack of subject matter jurisdiction, it did so in

error.

We find no merit in defendants’ argument. Initially, we

note that the district court subsequently amended its September 8

order to explicitly state that it had granted summary judgment on

all of David Batiste’s claims, and on all of Paul and Michael

Batiste’s claims except their state-law claims for conversion and

misappropriation, and that the court entered partial judgment on

the copyright claims under Federal Rule of Civil Procedure 54(b). 

These actions demonstrate that the district court did deny

defendants’ motion to dismiss, and we agree with its

determination that the Batistes may properly assert their

copyright infringement claims as beneficial owners of Bolden’s

registered copyright. See 17 U.S.C. § 501(b) (“The legal or

beneficial owner of an exclusive right under a copyright is

entitled . . . to institute an action for any infringement of

that particular right committed while he or she is the owner of

it.”); Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984) (“When

a composer assigns copyright title to a publisher in exchange for

the payment of royalties, an equitable trust relationship is

established between the two parties which gives the composer

standing to sue for infringement of that copyright.”). 

3 The district court appears to have included Bolden in its

disposition of the motions for summary judgment and dismissal. 

We have carefully reviewed the record, however, and we find no

indication that Bolden either joined defendants’ motion for

summary judgment or made such a motion on his own behalf. We

therefore necessarily construe the district court’s order as

granting summary judgment only on those claims made against the

moving defendants, leaving the Batistes’ claims against Bolden

unaffected. 

7

filed a motion for summary judgment on all claims, and the

Batistes filed a motion seeking summary judgment in their favor

on their copyright, Lanham Act, and misappropriation claims

against defendants and Bolden.

The district court granted defendants summary judgment on

all of David Batiste’s claims, and on all of Paul and Michael

Batiste’s claims except conversion and misappropriation.3 The
8

court found that the Songwriter’s Contract effectively

transferred any interest David Batiste had in “Funky Soul” to

Bolden, that Bolden had authorized defendants to use the

composition, and that therefore the Batistes had failed to raise

a genuine issue of material fact on their copyright infringement

claims. The district court also determined that the Batistes

failed to raise an issue of material fact that defendants had

violated the Lanham Act because “Funky Soul” was attributed to

“David Batiste & The Gladiators” in the liner notes accompanying

the album, and that defendants’ actions were not unfair or

deceptive under the LUTPL because David Batiste transferred any

interest he had in the “Funky Soul” composition to Bolden in

exchange for royalties and the Batistes failed to produce any

evidence indicating that defendants knew or should have known of

any interest in “Funky Soul” held by Paul and Michael Batiste. 

Finally, the district court granted summary judgment on David

Batiste’s conversion and misappropriation claims because he had

transferred any ownership rights he held to Bolden in 1970, but

the court refused to grant summary judgment on similar claims

raised by Paul and Michael Batiste because they “need only

establish that the defendants are in possession of property which

belongs to them.” In subsequent orders, the district court

dismissed the Batistes’ claims against Featherstone as lacking
4 Under 28 U.S.C. § 1367(c), a district court “may decline

to exercise supplemental jurisdiction over a claim . . . if--

(1) the claim raises a novel or complex issue of State law,

(2) the claim substantially predominates over the claim or claims

over which the district court has original jurisdiction,

(3) the district court has dismissed all claims over which it has

original jurisdiction, or

(4) in exceptional circumstances, there are other compelling

reasons for declining jurisdiction.”

5 The Batistes failed to provide any argument in either

their briefs or at oral argument supporting their appeal of the

district court’s order dismissing Featherstone for lack of

personal jurisdiction, and we consider this claim abandoned. See

Cinel v. Connick, 15 F.3d 1338, 1345 (5th Cir. 1994). 

6 Bolden does not appeal, and we do not consider, the

district court’s dismissal without prejudice of the Batistes’

claims against him under 28 U.S.C. § 1367(c). 

9

personal jurisdiction and dismissed their remaining state-law

claims under 28 U.S.C. § 1367(c).4 The Batistes timely appeal.

III. DISCUSSION

The Batistes argue on appeal that the district court

erroneously granted defendants summary judgment on their

copyright infringement, Lanham Act, LUTPL, and conversion and

misappropriation claims, and that Featherstone had sufficient

minimum contacts with the state of Louisiana for the court to

exercise personal jurisdiction.5 Defendants cross-appeal,

arguing that the district court abused its discretion by

dismissing without prejudice the Batistes’ surviving state-law

claims.6 We address these arguments in turn.

A. Copyright Infringement
10

The Batistes argue that the district court erred in granting

summary judgment on their copyright infringement claims because

defendants’ use of “Funky Soul” infringed the “Funky Soul”

copyright and was not authorized by the 1970 Songwriter’s and

Artist Contracts or the three contracts that Bolden entered into

in 1993. The Batistes contend that the Songwriter’s and Artist

Contracts between David Batiste and Bolden are invalid because

David Batiste does not remember signing them and the contracts

are “suspect enough to raise a factual issue.” Furthermore, the

Batistes argue that these contracts did not anticipate or

authorize the digital sampling method at issue, and that the

contracts cannot apply to Paul and Michael Batiste because they

were minors at the time and did not authorize David Batiste to

negotiate on their behalf.

The Batistes allege that even if the 1970 contracts did

allow Bolden to license the use of a digital sample of “Funky

Soul” to defendants, the contracts that Bolden executed in 1993

do not authorize defendants’ use. Specifically, the Batistes

claim that either (1) “So On” is a “derivative work,” and the

1993 contracts serve only to authorize and share profits from the

new material Cordes added to the song, not the pre-existing work;

or (2) the contracts between Bolden and Gee Street/MCA purport to

render “So On” a “joint work,” a characterization that would

effectively merge Cordes’s contribution with Bolden’s rights in

“Funky Soul,” and that such a characterization under the “Twelfth
7 The “Twelfth Street Rag” doctrine derives from the Second

Circuit’s decision in Shapiro, Bernstein & Co. v. Jerry Vogel

Music Co., 221 F.2d 569, modified on reh’g, 223 F.2d 252 (2d Cir.

1955), allowing the assignee of an ownership interest in a

musical composition to add new elements to a pre-existing work

and thereby create new ownership interests in the resulting

“joint work,” extinguishing any other ownership interests in the

pre-existing work. Congress overruled this doctrine in 1976 by

adopting the current definition for “joint work,” which requires

that each author intend the merger at the time the author

prepares his or her contribution. See 17 U.S.C. § 101 (defining

“joint work” as a “work prepared by two or more authors with the

intention that their contributions be merged into inseparable or

interdependent parts of a unitary whole”). 

8 The Batistes make two other arguments respecting the

validity of the 1993 contracts of which we easily dispose. The

Batistes claim that (1) the alleged infringements occurred before

any licenses were issued by Bolden, and defendants cannot

demonstrate that the agreements preceded the release of “the

Bliss Album,” and (2) defendants attempted to assign the benefits

of the contracts to each other without obtaining Bolden’s prior

written consent. We note initially that the summary judgment

evidence shows that the Master Recording Sampling License and

Mechanical License Agreement had already been executed at the

time of release and that the remaining, unexecuted contract does

not purport to authorize the use of “Funky Soul.” In addition,

to the extent that any writing requirement in the contracts

applies to assignments among defendants, the summary judgment

evidence demonstrates that Bolden waived such a requirement and

implicitly consented to defendants’ use. See Lulirama Ltd. v.

Axcess Broadcast Servs., Inc., 128 F.3d 872, 879 (5th Cir. 1997)

(stating that, under federal copyright law, a nonexclusive

license may be granted orally or implied from conduct). 

11

Street Rag” doctrine7 makes the contracts invalid because they

attempt to achieve a result prohibited by copyright law.8

“We review a grant of summary judgment de novo, applying the

same criteria used by the district court in the first instance.” 

Texas Manufactured Housing Ass’n v. City of Nederland, 101 F.3d

1095, 1099 (5th Cir. 1996); see Tolson v. Avondale Indus., Inc.,

141 F.3d 604, 608 (5th Cir. 1998). Summary judgment is proper
12

“if the pleadings, depositions, answers to interrogatories, and

admissions on file, together with the affidavits, if any, show

that there is no genuine issue as to any material fact and that

the moving party is entitled to a judgment as a matter of law.” 

FED. R. CIV. P. 56(c); see Celotex Corp. v. Catrett, 477 U.S. 317,

327 (1986). The party moving for summary judgment bears the

initial burden of showing an absence of evidence to support the

nonmoving party’s case, see id. at 322-27, but, once this burden

has been met, the nonmoving party can resist the motion by making

a positive showing that a genuine issue of material fact exists, 

see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). 

The nonmovant must go beyond the pleadings and designate specific

facts showing that there is a genuine issue of material fact for

trial. See Celotex, 477 U.S. at 324-25. Finally, we note that a

grant of summary judgment may be affirmed on any ground that was

raised to the district court and upon which both parties had the

opportunity to present evidence. See Conkling v. Turner, 18 F.3d

1285, 1296 n.9 (5th Cir. 1994).

The only question that we face regarding the Batistes’

copyright claims is whether the Batistes have successfully

demonstrated a genuine issue of material fact that the multiple

contracts among the parties are insufficient to authorize

defendants’ use of a digital sample of “Funky Soul” in their song

“So On.” After carefully examining the contracts between David

Batiste and Bolden and the contracts between Bolden and Gee
13

Street/MCA, we agree with the district court’s conclusion that

there is no such issue of material fact and that defendants are

entitled to summary judgment on these claims.

The Batistes point to no evidence supporting their

allegation that the 1970 contracts are invalid or otherwise

“suspect,” and David Batiste’s inability to remember signing them

is not sufficient to raise a material issue as to the validity of

the agreements. See Lone Star Indus., Inc. v. Nelstad Material

Corp., 811 F. Supp. 147, 149 (S.D.N.Y. 1993). David Batiste

granted Bolden the entire musical composition, including the

exclusive right to secure copyright, “all rights of whatsoever

nature” relating to the copyright, and the right to license, “in

any or all fields of use, by any method now or hereafter known,

throughout the world, records embodying the performances.” Such

a grant is sufficiently broad to include the licensing of a

record containing a digital sample of “Funky Soul.” Cf. Boosey &

Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481,

485-88 (2d Cir. 1998) (concluding that 1939 agreement conveying

the right “to record [a composition] in any manner, medium or

form” for use “in [a] motion picture” is sufficiently broad to

include distribution of the motion picture in laser disc format);

Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881,

885 (9th Cir. 1996) (stating that right to synchronize music in

any future technologies, including videocassettes, is included in

clause granting party all the music rights of a motion picture). 
14

Finally, we note that the validity of Paul and Michael Batiste’s

allegations that David Batiste did not have authority to enter

the 1970 contracts on their behalf is immaterial to their claims

of copyright infringement against any party’s use that was

authorized by their brother. See Quintanilla v. Texas Television

Inc., 139 F.3d 494, 498 (5th Cir. 1998) (“‘A co-owner of a

copyright cannot be liable to another co-owner for infringement

of the copyright.’”) (quoting Oddo v. Ries, 743 F.2d 630, 632-33

(9th Cir. 1984)); Cortner v. Israel, 732 F.2d 267, 271 (2d Cir.

1984) (“It is elementary that the lawful owner of a copyright is

incapable of infringing a copyright interest that is owned by

him; nor can a joint owner of a copyright sue his co-owner for

infringement.”); MELVIN B. NIMMER & DAVID NIMMER, 1 NIMMER ON COPYRIGHT

§ 6.10 (1999) [hereinafter NIMMER] (“[A]n authorization to the

defendant from one joint owner will be an effective defense to an

infringement action brought by another joint owner.”).

We also find no merit in the Batistes’ arguments that the

1993 contracts between Bolden and Gee Street/MCA are invalid

because they purport to create a “joint work.” The contracts

recognize that Bolden, as the owner of the “Funky Soul”

copyright, retains his copyright therein. See Gilliam v.

American Broadcasting Cos., 538 F.2d 14, 22 (2d Cir. 1976)

(stating that provision in license retaining rights in preexisting script “suggest[s] that the parties did not consider

themselves joint authors of a single work”). Although the
9 Under § 43(a),

Any person who, on or in connection with any goods or

services . . . uses in commerce any word, term, name,

symbol, or device, or any combination thereof, or any false

designation of origin, false or misleading description of

fact, which . . . is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation, connection, or

association of such person with another person, or as to the

origin, sponsorship, or approval of his or her goods,

15

Administration Agreement does provide that Bolden and MCA jointly

own “So On” as an authorized, derivative work, joint ownership of

a derivative work does not alone create a “joint work.” The

policies underlying the “Twelfth Street Rag” doctrine thus do not

apply, and we see no conflict between the 1993 contracts and

Congress’s abrogation of that doctrine. Furthermore, it is clear

from the face of the 1993 contracts that they form a license to

use “Funky Soul” and do not merely authorize and share profits

from Cordes’s additional material. We therefore conclude that

the district court was correct in its determination that no

genuine issue of material fact exists regarding defendants’

authorized use of “Funky Soul” and properly entered summary

judgment on the copyright infringement claims in their favor.

B. Lanham Act

The Batistes argue that the district court erroneously

granted summary judgment on their claims that defendants

“mutilate[d]” “Funky Soul” and that this “abuse” of their work

amounts to “reverse passing off” in violation of § 43(a) of the

Lanham Act, 15 U.S.C. § 1125(a).9 Relying on the Second
services, or commercial activities by another person . . .

shall be liable in a civil action by any person who believes

that he or she is or is likely to be damaged by such act. 

15 U.S.C. § 1125(a).

16

Circuit’s decision in Gilliam, the Batistes claim that an author

has a “legal and moral right to have his work attributed to him

in the form in which he wrote it,” and that defendants’ licenses

“would not have permitted defendants to mutilate plaintiffs’

works.” Finally, the Batistes argue that defendants failed to

properly credit their contribution to “So On” because Michael and

Paul Batiste’s “authorship contributions” were not mentioned and

that the “Funky Soul Track” constitutes the entire instrumental

track in “So On.”

In Gilliam, the Second Circuit considered a claim by a group

of authors and performers known as “Monty Python” seeking a

preliminary injunction to prevent the American Broadcasting

Company (ABC) from broadcasting edited versions of three of their

programs. See 538 F.2d at 17. The Second Circuit enjoined the

broadcasts, concluding that the group had shown a likelihood of

succeeding on the merits of their claims that the editing

exceeded the scope of ABC’s license. See id. at 22-23. The

court further determined that the group would likely succeed on

its claim under the Lanham Act that, “regardless of the right ABC

had to broadcast an edited program, the cuts made constituted an

actionable mutilation of Monty Python’s work,” and that such a
17

cause of action “finds its roots in the continental concept of

droit moral, or moral right, which may generally be summarized as

including the right of the artist to have his work attributed to

him in the form in which he created it.” Id. at 23-24; see 3

NIMMER at § 8D.04[A][2].

Even if we were to adopt the reasoning of the Second Circuit

and determine that the “manipulation” that “Funky Soul” suffered

is sufficient to state a cause of action under the Lanham Act, we

still must conclude that summary judgment in favor of defendants

was proper because the Batistes have failed to demonstrate the

existence of a genuine issue of likelihood of confusion. See 15

U.S.C. § 1125(a)(1)(A) (prohibiting misleading representations of

fact which are likely to cause confusion, mistake, or deception);

3 NIMMER at § 8D.04[A][2] (stating that, for a plaintiff to

prevail on such a manipulation claim, “it must invoke the

appropriate elements for relief under the Lanham Act, rather than

simply serving as a back-door method for reviving failed

copyright claims”) (footnote omitted). The Batistes point to no

evidence in the record demonstrating that consumers were confused

or deceived by either the use of a digital sample of “Funky Soul”

in “So On” or the attribution to “David Batiste & The Gladiators”

as a co-author of “So On.” The Batistes’ claim that Paul and

Michael Batiste were improperly excluded from the liner notes

accompanying the album also fails to suggest that consumers were

confused, especially because the liner notes do credit the name
18

of the band in which both Paul and Michael Batiste performed. 

Finding no evidence of a genuine issue of consumer confusion, we

affirm the district court’s grant of summary judgment in favor of

defendants on the Batistes’ Lanham Act claims.

C. State-Law Claims

 The Batistes argue that the district court erred in granting

defendants summary judgment on their claims of unfair trade

practices under the LUTPL, conversion, and misappropriation. The

Batistes again contend that the district court improperly

determined that the Songwriter’s and Artist Contracts that David

Batiste entered into in 1970 are valid and authorize defendants’

use of “Funky Soul.”

The Batistes’ claims of unfair trade practices, conversion

and misappropriation are delictual under Louisiana law and are

therefore subject to a one-year prescriptive period. See LA.

REV. STAT. ANN. § 51:1409(E) (stating that a private action under

the LUTPL “shall be prescribed by one year running from the time

of the transaction or act which gave rise to this right of

action”); LA. CIV. CODE ANN. § 3492 (“Delictual actions are subject

to a liberative prescription of one year.”); Johnson v. Concordia

Bank & Trust Co., 671 So. 2d 1093, 1098 (La. Ct. App. 1996)

(“Since conversion is a tort, the prescriptive period for

delictual actions applies to plaintiff’s action.”); Adams v.

First Nat’l Bank of Commerce, 644 So. 2d 219, 222-23 (La. Ct.

App. 1994) (determining that prescriptive period of one year
19

applies to cause of action for unfair trade practices); National

Union Fire Ins. Co. v. Spillars, 552 So. 2d 627, 630 (La. Ct.

App. 1989) (finding a suit based on misappropriation or wrongful

taking “is therefore a delictual action and subject to liberative

prescription of one year”). As a general rule, the prescriptive

period begins to run when the plaintiff has actual or

constructive knowledge of the alleged tortious act. See Mistich

v. Cordis Mfg. Co., 607 So. 2d 955, 956 (La. Ct. App. 1992).

“[T]he Bliss Album” containing the digital sample of “Funky

Soul” was released in March 1993, and the Batistes admit that by

July 1993 they knew that defendants had used “Funky Soul” without

their permission. Nonetheless, the Batistes did not file this

suit until March 1995. In their reply brief, the Batistes argue

that this court held in Songbyrd, Inc. v. Bearsville Records,

Inc., 104 F.3d 773 (5th Cir. 1997), that an action to recover for

misappropriation of masters and sound recordings is not subject

to liberative prescription, and that “this case involves a direct

dispute over ownership of the master rights.” The Batistes

further contend that their remaining state law claims are saved

from prescription by the doctrine of equitable tolling--

specifically, they claim that defendants’ “absolute refusal to

provide information” after the Batistes contacted Bolden and

defendants in mid-1993 acted to toll the prescriptive period and

makes their present claims timely.
20

The Batistes’ arguments misconstrue both our decision in

Songbyrd and the equitable tolling doctrine, and neither of these

contentions saves their state-law claims from the applicable oneyear prescriptive period. Initially, we note that our

determination that the plaintiff’s cause of action in Songbyrd

was not subject to the one-year prescriptive period relied on our

conclusion that the plaintiff’s claim, which sought recognition

of its ownership interest in physical master recordings and the

return of those recordings, was a “revindicatory action” seeking

the return of property rather than a “personal action.” See

Songbyrd, 104 F.3d at 777. The Batistes, however, do not assert,

and there is no evidence suggesting, that defendants ever

possessed the physical master recording or any other physical

property belonging to the Batistes. Rather, the Batistes argue

that the “Funky Soul” sound recording was misappropriated because

defendants used it in “So On,” and they seek damages for this

use. The Batistes’ claims are therefore properly considered

“personal actions” and are subject to the one-year prescriptive

period. See id. at 777-79. Finally, we decline the Batistes’

invitation to invoke the equitable tolling doctrine because the

Batistes admit that they knew the facts underlying their cause of

action and sought legal advice on how to pursue their claims more

than one year prior to filing suit against defendants. Cf.

Kavanaugh v. Long, 698 So. 2d 730, 738 (La. Ct. App. 1997)

(stating that equitable tolling suspends prescriptive period for
21

medical malpractice claim, “but only until the patient knew or

should have known of the malpractice or concealment from other

sources”). We therefore affirm the district court’s grant of

summary judgment in favor of defendants on the Batistes’ claims

of unfair trade practices, and on David Batiste’s claims of

misappropriation and conversion.

D. Pendent Jurisdiction

Following the district court’s entry of summary judgment on

all the Batistes’ claims against defendants except Paul and

Michael Batiste’s claims of conversion and misappropriation, the

court declined to retain supplemental jurisdiction over the

remaining claims under 28 U.S.C. § 1367 and granted the Batistes’

motion to voluntarily dismiss these claims without prejudice. 

Defendants appeal the district court’s decision to dismiss these

claims without prejudice and urge us to render judgment on these

claims as well, arguing that they are also time-barred because

they were filed more than one year after Paul and Michael Batiste

admit they knew the facts underlying their causes of action. 

Defendants contend that the district court abused its discretion

by allowing the Batistes’ voluntary dismissal just one month

before trial and after defendants had spent three years and more

than one million dollars fighting this litigation, and defendants

further note that the parties had engaged in extensive discovery

including numerous depositions, provided the district court with
22

hundreds of pages of briefing and several hours of oral argument,

and had “extensively addressed” these remaining claims.

We review a district court’s decision to decline

jurisdiction over pendent state-law claims for an abuse of

discretion. See Robertson v. Neuromedical Ctr., 161 F.3d 292,

296 (5th Cir. 1998); McClelland v. Gronwaldt, 155 F.3d 507, 519

(5th Cir. 1998). “Our review is guided by the relevant statutory

provisions governing the exercise of supplemental jurisdiction,

see 28 U.S.C. § 1367(c), as well as the Supreme Court’s

articulation of the scope and nature of district courts’

discretion in exercising jurisdiction over pendent state law

claims.” McClelland, 155 F.3d at 519. We must therefore

consider both the statutory provisions of 28 U.S.C. § 1367(c) and

the balance of the relevant factors of judicial economy,

convenience, fairness, and comity that the Supreme Court outlined

in Carnegie-Mellon University v. Cohill, 484 U.S. 343, 350-51

(1988), and United Mine Workers v. Gibbs, 383 U.S. 715, 726

(1966), in determining whether the district court abused its

discretion in allowing the Batistes’ voluntary dismissal of their

remaining state-law claims.

Although we have stated that our “general rule” is to

decline to exercise jurisdiction over pendent state-law claims

when all federal claims are dismissed or otherwise eliminated

from a case prior to trial, this rule is neither mandatory nor

absolute. McClelland, 155 F.3d at 519 (citing Wong v. Stripling,
23

881 F.2d 200, 204 (5th Cir. 1989)); see Cohill, 484 U.S. at 350

n.7 (stating that “in the usual case in which all federal-law

claims are eliminated before trial, the balance of factors to be

considered under the pendent jurisdiction doctrine . . . will

point toward declining to exercise jurisdiction over the

remaining state-law claims”). Thus, while the district court’s

dismissal of the Batistes’ federal claims “provides ‘a powerful

reason to choose not to continue to exercise jurisdiction,’ no

single factor is dispositive in this analysis.” McClelland, 155

F.3d at 519 (quoting Cohill, 484 U.S. at 351); see Newport Ltd.

v. Sears, Roebuck & Co., 941 F.2d 302, 307 (5th Cir. 1991). We

therefore must review the district court’s decision “in light of

the specific circumstances of the case at bar.” McClelland, 155

F.3d at 519; see Parker & Parsley Petroleum Co. v. Dresser

Indus., 972 F.2d 580, 585 (5th Cir. 1992).

We begin our analysis of the factors relevant to the pendent

jurisdiction inquiry by noting that the remaining claims do not

involve any “novel or complex” issues of state law. Newport

Ltd., 941 F.2d at 308 (stating that district court abused its

discretion in allowing plaintiff to voluntarily dismiss state-law

claims because, inter alia, the remaining issues “present no

novel or especially unusual questions which cannot be readily and

routinely resolved by the court a 4quo”); cf. McClelland, 155

F.3d at 519-20 (“[O]ur section 1367(c) analysis results in the

conclusion that remand is appropriate” based, in part, on the
24

presence of “at least one ‘novel or complex’ issue of state

law.”); Parker & Parsley Petroleum, 972 F.2d at 589 (stating that

principles of federalism and comity “point strongly toward

dismissal” because “[a]ll of the remaining legal issues of the

case, of course, are of state law . . . [and] are difficult

ones”). The district court here had already granted defendants

summary judgment on some state-law claims, and, as we set forth

above, all state-law claims are prescribed. The absence of any

difficult state-law questions thus weighs heavily toward our

conclusion that the district court abused its discretion in

refusing to retain jurisdiction over the remaining claims.

We also conclude that the factors of judicial economy,

convenience, and fairness to the parties strongly point toward

our conclusion that the district court erred by not retaining

jurisdiction here. The case had been pending in the district

court for almost three years when the court allowed the Batistes’

voluntary dismissal, and the trial was scheduled to begin one

month later. See Newport Ltd., 941 F.2d at 307-08 (“[A]fter four

years of litigation produced 23 volumes and thousands of pages of

record, the preparation of a pretrial order exceeding 200 pages,

over a hundred depositions, and according to counsel nearly two

hundred thousand pages of discovery production, the declining to

hear this case on the eve of trial constituted an abuse of the

trial court’s discretion.”); cf. Cohill, 484 U.S. at 351 (“When

the single federal-law claim in the action was eliminated at an
25

early stage of the litigation, the District Court had a powerful

reason to choose not to exercise jurisdiction.”). The instant

case has produced more than sixteen volumes of record over the

course of three years, numerous depositions and discovery

disputes, and significant consideration by the district court of

multiple motions to dismiss claims or grant summary judgment. 

See Parker & Parsley Petroleum, 972 F.2d at 587 (“[T]he amount of

judicial resources that the case has consumed is most important

for our analysis as an indication of the familiarity of the forum

with the case and its ability to resolve the dispute

efficiently.”). The familiarity of the district court with the

merits of the Batistes’ claims demonstrates that further

proceedings in the district court would prevent redundancy and

conserve scarce judicial resources, and we therefore conclude

that principles of judicial economy, convenience, and fairness to

the parties weigh heavily toward our determination that the

district court abused its discretion in dismissing the Batistes’

remaining claims.

After considering and weighing all the factors present in

this case, and relying especially on our conclusion that the

district court was intimately familiar with the Batistes’ claims

and the absence of any difficult state-law issue in the remaining

claims, we thus conclude that the district court abused its

discretion and reverse its decision dismissing Paul and Michael

Batiste’s conversion and misappropriation claims without
26

prejudice. Furthermore, in the interest of further judicial

economy and in light of our determination above that the

Batistes’ state-law claims are prescribed, we remand Paul and

Michael Batiste’s conversion and misappropriation claims to the

district court with instructions to enter judgment in favor of

all defendants except Bolden, disposing of all claims against

such defendants.

IV. CONCLUSION

For the foregoing reasons, we AFFIRM the judgment of the

district court granting defendants summary judgment and

dismissing Featherstone for lack of personal jurisdiction,

REVERSE the district court’s dismissal of Paul and Michael

Batiste’s misappropriation and conversion claims against all

defendants except Bolden, and REMAND with instructions to enter

judgment in favor of such defendants on those claims.