In the

United States Court of Appeals

For the Seventh Circuit

Nos. 08-3810, 09-2213 & 10-1733

SYL JOHNSON, also known as

SYLVESTER THOMPSON,

Plaintiff-Appellant,

v.

CYPRESS HILL, et al.,

Defendants-Appellees.

Appeals from the United States District Court

for the Northern District of Illinois, Eastern Division.

Nos. 1:03-cv-09452 & 1:08-cv-07264—Charles R. Norgle, Sr., Judge.

ARGUED FEBRUARY 10, 2011—DECIDED JUNE 1, 2011

Before MANION, EVANS, and HAMILTON, Circuit Judges.

EVANS, Circuit Judge. Syl Johnson, an American blues

and soul singer—well known in the 1960s and 1970s

for his exploration of African-American identity and

social problems—wrote a song entitled, “Is It Because
2 Nos. 08-3810, 09-2213 & 10-1733

The song is available at: http://www.youtube.com/watch?v= 1

zKfZYgHm8So (last visited May 17, 2011).

The members of Cypress Hill—Lawrence Muggerud, Senen 2

Reyes, and Louis Freese—are also named defendants. We will

refer to the defendants collectively as Cypress Hill.

The track in question is titled, “Interlude” on some copies of 3

“Black Sunday” and “Lock Down” on others. The tracks are

identical. “Interlude” is available at: http://www.youtube.com/

watch?v=aADH4148iQo (last visited May 17, 2011).

I’m Black” (the “Song”). Twenty-five years later, 1

Cypress Hill , an extremely popular and successful hip- 2

hop group, released the album, “Black Sunday.” One of

the tracks on “Black Sunday,” titled “Interlude,” plays 3

a section of Johnson’s Song.

In 2003, Johnson filed suit against Cypress Hill alleging

copyright infringement of the Song. Over four years

into litigation, the district judge granted Cypress Hill’s

motion for summary judgment after concluding that

Johnson failed to prove he held a valid copyright in the

Song. Johnson now appeals.

In 1968, Johnson, working with Glenn Watts and

Jimmy Jones, wrote “Is It Because I’m Black.” In 1969,

Twinight Records released a recorded version of the

Song as a 45-RPM. That same year, the Song reached

number 11 on the R&B charts. In 1972, Johnson rerecorded the Song. The 1972 recording was never

released in the United States. In 1997, Johnson

applied for and received United States copyright registration SRU-360-891 for a sound recording compilation.
Nos. 08-3810, 09-2213 & 10-1733 3

In March 2004, Cypress Hill did reach an agreement with 4

Sunlight Records, Inc. (owned by Peter Wright, the co-owner

of Twinight Records) which claimed that it was the holder of

all rights in the Song. The deal for the license was roughly

$25,000 and released Cypress Hill and its licensees from all

past, present, and future claims related to Cypress Hill’s use

of the Song in “Interlude.”

A “sound recording” copyright protects rights in a specific 5

recording of a musical work. A sound recording copyright is

(continued...)

Johnson believed that he included the 1972 recording of

the Song in his submission, but he did not. Therefore, the

Song was not covered by a valid federal copyright. In

June 2003, Watts filed a Form PA composition copyright registration on the words and music of the Song,

listing Johnson and Jones as co-authors. The Copyright

Office assigned it registration number PA 1-192-702.

In 1993, Cypress Hill released its “Black Sunday” album.

The song in question in this case, “Interlude,” is a 77-

second song in the middle of the 14-track album. “Interlude” includes 2.5 seconds of Johnson’s Song “looped”

for the entire 77 seconds. Cypress Hill admits that it

failed to obtain permission from Johnson to use the Song.4

In 2003, Johnson—after listening to “Interlude” and

deciding that his Song was used—filed a pro se complaint against Cypress Hill alleging copyright infringement and a state law fraud claim. Four months

later, after obtaining counsel, Johnson filed an amended

complaint asserting a single claim, infringement of

the sound recording copyright SRU-360-891, asking for 5
4 Nos. 08-3810, 09-2213 & 10-1733

(...continued) 5

distinct from a “composition” copyright, which protects

rights in the underlying work, i.e., the music and, if applicable,

lyrics. 17 U.S.C. § 102(a)(2), (7). 

a staggering $29,000,000 in relief. Johnson made this

claim under the mistaken belief that his Song was

covered by the copyright. At no point during the next

four years did he check to make sure it was actually

covered.

In March 2006, Peter Wright, an owner of Twinight

Records, filed a declaration stating that the SRU-360-891

registration did not include a recording of the Song. In

June 2006, Johnson’s co-writer, Watts, filed a lawsuit

against Cypress Hill claiming infringement of copyrights

PA 1-192-702 and SRU-360-891 (the SRU-360-891 claim

was later dropped). In October 2007, Lawrence Muggerud, the member of Cypress Hill who created “Interlude,” testified that he came across the Song on the 1969

45-RPM single released by Twinight Records. This last

event is particularly crucial to Johnson’s claim because,

under the Copyright Act, sound recordings fixed before

February 15, 1972 are not subject to copyright protection,

but may be protected by state law. See 17 U.S.C. § 301(c).

Once Johnson affirmatively knew that Cypress Hill

used the 1969 version, there was no situation under

which his sound recording copyright infringement

claim could succeed.

Meanwhile, the parties initiated and proceeded with

discovery on the allegations in Johnson’s amended com-
Nos. 08-3810, 09-2213 & 10-1733 5

plaint, namely the alleged copyright infringement of SRU360-891. At the close of long and protracted discovery proceedings, and in accordance with the district

judge’s order, Cypress Hill filed a motion for summary judgment in February 2008. Cypress Hill argued

that Johnson could not prove infringement of copyright

SRU-360-891 because: (1) there is no copyright protection for a 1969 sound recording; and (2) the compilation submitted for the SRU-360-891 copyright did not

include any version of the Song.

Johnson responded, in his brief opposing summary

judgment, by arguing—for the first time—that he was

entitled to relief under common law misappropriation

and infringement of the composition copyright PA 1-192-

702. He conceded that his 1969 recording of the Song

cannot obtain a sound recording copyright.

In May 2008, Johnson filed a motion for leave to file a

second amended complaint. The proposed amendment

redacted Johnson’s claim for infringement of his sound

recording copyright and substituted claims for common

law misappropriation and infringement of composition

copyright PA 1-192-702. The judge denied Johnson’s

motion, finding that leave to amend was not warranted

due to Johnson’s undue delay and the “substantial prejudice” to Cypress Hill that would result from allowing

an amendment four years into litigation and after the

close of discovery. The judge then granted Cypress

Hill’s motion for summary judgment, finding that the

compilation of songs Johnson submitted to the Copyright Office did not include a recording of the Song and,
6 Nos. 08-3810, 09-2213 & 10-1733

therefore, Johnson had “failed entirely to show ownership of a valid copyright in the 1969 sound recording.”

Johnson filed a motion under Rule 60(b) of the Federal

Rules of Civil Procedure requesting that the court vacate

its summary judgment order and enter an order dismissing the case for lack of subject-matter jurisdiction

pursuant to Fed. R. Civ. P. 12(h)(3). Johnson argued

that because he never had a copyright the district court

did not have subject-matter jurisdiction over the action.

The court denied his motion.

Cypress Hill then filed a motion for attorney’s fees and

costs pursuant to 17 U.S.C. § 505, arguing that Johnson

knew or should have known from the outset of the litigation that he had no valid claim for infringement of copyright SRU-360-891 because no version of the Song was

included in his registered compilation, and the 1969

recording could not be copyrighted. Johnson responded

by maintaining that the action should have been dismissed for lack of subject-matter jurisdiction, and therefore 28 U.S.C. § 1919, which provides for an award of

“just costs,” should govern the award. The court

granted Cypress Hill’s motion for attorney’s fees and

costs, finding that Johnson’s amended complaint was

“legally baseless” as he could not demonstrate ownership of a valid copyright in the Song. The court reduced

Cypress Hill’s requested attorney’s fees by 15%, and

awarded $321,995.25 in attorney’s fees and $10,620.53

in costs.

In October 2008, Johnson filed a new action against

Cypress Hill in the Circuit Court of Cook County (Johnson
Nos. 08-3810, 09-2213 & 10-1733 7

II), reasserting the state law misappropriation claim he

had attempted to add in Johnson I. Cypress Hill removed the action to federal court based on diversity

jurisdiction. After removal, Johnson moved to file

an amended complaint—a claim for infringement of

composition copyright PA 1-192-702. At this point, Johnson’s claim was identical to the claim in the amended

complaint he tried to file without success in the original

case. Accordingly, Cypress Hill moved to dismiss the

amended complaint as barred by res judicata. The judge

granted the motion to dismiss with prejudice, holding

that the Johnson II claims were barred by res judicata.

On appeal, Johnson argues that: (1) the district court

abused its discretion in denying his motion for leave

to amend; (2) the court lacked subject-matter jurisdiction over the action and therefore was without power

to grant summary judgment on the merits; (3) the court

erred in granting attorneys’ fees pursuant to 17 U.S.C.

§ 505; and (4) the court erred in finding Johnson’s

amended complaint in Johnson II was barred by res judicata.

We begin with Johnson’s primary claim; that the

judge abused his discretion in denying his motion for

leave to amend. We review a district judge’s denial of a

motion for leave to amend for abuse of discretion.

Trustmark Insurance Co. v. General & Cologne Life Re of

America, 424 F.3d 542, 553 (7th Cir. 2005). Although Fed.

R. Civ. P. 15(a) provides that leave to amend “ ‘shall be

freely given when justice so requires,’ [it] is not to be

automatically granted.” Johnson v. Methodist Medical

Center of Ill., 10 F.3d 1300, 1303 (7th Cir. 1993). “[District]
8 Nos. 08-3810, 09-2213 & 10-1733

courts have broad discretion to deny leave to amend

where there is undue delay, bad faith, dilatory motive,

repeated failure to cure deficiencies, undue prejudice to

the defendants, or where the amendment would be

futile.” Hukic v. Aurora Loan Services, 588 F.3d 420, 432

(7th Cir. 2009) (internal citation omitted). And while

delay on its own is usually not reason enough for a court

to deny a motion to amend, Dubicz v. Commonwealth

Edison Co., 377 F.3d 787, 792-93 (7th Cir. 2004), the “longer

the delay, the greater the presumption against granting

leave to amend.” King v. Cooke, 26 F.3d 720, 723 (7th Cir.

1994) (internal citation omitted).

The district judge denied the motion, finding that Johnson’s four-year wait to amend his complaint, after discovery closed and Cypress Hill filed its motion for summary judgment, was undue delay. Johnson argues in

response that he made his motion shortly after learning

that the Song Cypress Hill used was the 1969 version,

not the 1972 version. But Johnson’s argument fails for

several reasons.

First, as the judge noted, in March, 2006, Johnson was

on notice that his claim was deficient when Wright (the

owner of Twinight Records) stated in his declaration

that the tape Johnson submitted to the Copyright Office

did not include a recording of the Song. Second, in

May 2007, Johnson’s co-author, Watts, withdrew the

infringement claim for sound recording copyright SRU360-891 from his complaint, and left only his claim under

composition copyright PA 1-192-702. Third, in October

2007, Johnson learned from Muggerud’s deposition
Nos. 08-3810, 09-2213 & 10-1733 9

testimony that his claim under SRU-360-891 was baseless. Yet Johnson did not file a motion to amend his

complaint until May 2008, seven months after Muggerud’s

deposition revealed that Cypress Hill used the 1969

version of the Song (which could not be copyrighted),

and years after he was on notice that the SRU-360-891

copyright did not cover the Song. Accordingly, the judge

did not abuse his discretion when he denied Johnson’s

motion to amend the complaint. See, e.g., Methodist, 10

F.3d at 1304 (affirming denial of motion to amend when

district judge found that even if plaintiff’s proposed

amendment were based on information learned during

depositions, plaintiff did not move until four or five

months later); Feldman v. American Memorial Life Insurance

Co., 196 F.3d 783, 793 (7th Cir. 1999) (affirming denial

of motion to amend based on five-month delay after

discovering the facts that allegedly necessitated the

amendment); Perrian v. O’Grady, 958 F.2d 192, 195 (7th

Cir. 1992) (affirming denial of motion to amend when

plaintiff “ha[d] not explained why he waited [three and

a half months]” to add additional defendants).

Moreover, the judge found that Johnson’s new state

law claims for misappropriation would cause Cypress

Hill substantial prejudice. Johnson argues, however, that

the second amended complaint was merely clarifying

the legal basis on which he was relying. Again, Johnson

misstates the facts. Johnson’s amended complaint

sought to drop his claim of sound recording copyright

infringement of SRU-360-891 and introduce two new

claims: a claim for state law misappropriation, and a

claim for infringement of composition copyright PA 1-192-
10 Nos. 08-3810, 09-2213 & 10-1733

702. Discovery had long been closed, and Cypress Hill

had filed a motion for summary judgment. Allowing

Johnson to amend his complaint would mean additional

discovery focused on whether misappropriation had

occurred under Illinois state law. See Board of Trade of the

City of Chicago v. Dow Jones & Co., Inc., 456 N.E.2d 84, 88-

89 (Ill. 1983). Thus, in addition to the lengthy delay,

allowing Johnson to change the course of the litigation

four years into the case would be prejudicial to Cypress

Hill. See Methodist, 10 F.3d at 1302-04.

Furthermore, “[t]here must be a point at which a

plaintiff makes a commitment to the theory of [his] case.”

Methodist, 10 F.3d at 1304. Johnson’s request to change

his claims on the eve of summary judgment is exactly

the sort of switcheroo we have counseled against. See, e.g.,

Feldman, 196 F.3d at 793 (finding that the prejudice that

would result from amendment that would have added a

new claim “well after the close of discovery and on the

eve of summary judgment proceedings” was so apparent that the district court was not required to

articulate the basis for its decision).

Johnson’s second claim is that the district judge did

not have the authority to enter summary judgment

because his failure to register a copyright deprived the

court of subject-matter jurisdiction and, therefore,

the action should have been dismissed pursuant to Fed. R.

Civ. P. 12(h)(3). We review questions of subject-matter

jurisdiction de novo. Schur v. L.A. Weight Loss Centers, Inc.,

577 F.3d 752, 758 (7th Cir. 2009).
Nos. 08-3810, 09-2213 & 10-1733 11

As Cypress Hill notes, and as Johnson acknowledged

at oral argument, this claim fails. In Reed Elsevier, Inc. v.

Muchnick, 130 S.Ct. 1237 (2010), the Court held that the

copyright registration requirement of 17 U.S.C. § 411(a)

“is a precondition to filing a claim that does not restrict

a federal court’s subject-matter jurisdiction.” Id. at 1241.

Therefore, Johnson’s argument that the district court

lacked subject-matter jurisdiction over his claim fails,

as it is foreclosed by Reed Elsevier. The court had jurisdiction and properly granted Cypress Hill’s motion to

dismiss, as Johnson failed to prove a valid copyright in

the Song.

Johnson’s third argument is that the district court

improperly awarded attorney’s fees under 17 U.S.C. § 505.

Section 505 of the Copyright Act allows a district court

to award both costs and attorney’s fees to a “prevailing

party” in a copyright infringement action. See also,

Woodhaven Homes & Realty, Inc. v. Hotz, 396 F.3d 822,

824 (7th Cir. 2005) (quoting Assessment Technologies of WI,

LLC v. WIREdata, Inc., 361 F.3d 434, 437 (7th Cir. 2004))

(“When the prevailing party is the defendant, who by

definition receives not a small award but no award, the

presumption in favor of awarding fees is very strong”).

Johnson argues that the judge incorrectly granted

fees under Section 505 because the court did not have

subject-matter jurisdiction. As we just noted, however,

under Reed Elsevier the court had subject-matter jurisdiction and, therefore, correctly applied Section 505.

Thus, the only question is whether the judge properly

awarded fees.
12 Nos. 08-3810, 09-2213 & 10-1733

The judge found that because it was undisputed

that Cypress Hill was the prevailing party, and that Johnson’s infringement claim was legally baseless—he did

not have a valid copyright in the Song—he could not

overcome the “very strong” presumption to grant reasonable costs and attorney’s fees. We agree. Johnson

maintained his claim under SRU-360-891 for four years

despite clear notice that the claim was frivolous and

objectively unreasonable, as the Song was not covered

under the copyright and, moreover, was not eligible

for copyright protection. See Woodhaven, 396 F.3d at 824.

He has done nothing to rebut the presumption. Accordingly, the judge properly awarded costs and attorney’s

fees to Cypress Hill under Section 505.

Johnson’s final claim is that the judge improperly held

that the Johnson II amended complaint was barred by res

judicata. We review the district court’s dismissal of a

lawsuit on res judicata grounds de novo. Tartt v. Northwest

Community Hospital, 453 F.3d 817, 822 (7th Cir. 2006). Res

judicata prohibits parties “from re-litigating issues that

were or could have been raised in” a previous action

in which there was final judgment on the merits. Highway J Citizens Group v. U.S. Dep’t of Transportation, 456

F.3d 734, 741 (7th Cir. 2006). Essentially, res judicata embodies the principle that “claims ‘based on the same, or

nearly the same, factual allegations’ must be joined,”

Roboserve, Inc. v. Kato Kagaku Co., Ltd., 121 F.3d 1027, 1034

(7th Cir. 1997), and a prior judgment can “foreclos[e]

litigation of a matter that never has been litigated,

because of a determination that it should have been
Nos. 08-3810, 09-2213 & 10-1733 13

advanced in an earlier suit.” Migra v. Warren City School

District Board of Education, 465 U.S. 75, 77 n.1 (1984).

For res judicata to apply, three factors are necessary:

“(1) an identity of the parties or their privies; (2) an

identity of the cause of action; and (3) a final judgment on

the merits [in the earlier action].” Prochotsky v. Baker &

McKenzie, 966 F.2d 333, 334 (7th Cir. 1992). A cause of

action means “ ‘a single core of operative facts’ which

give rise to a remedy.” Golden v. Barenborg, 53 F.3d 866,

869 (7th Cir. 1995) (internal citation omitted). 

Johnson concedes that the same parties are involved in

both actions, but argues that the claims are not identical

and that there was no final judgment on the merits in

the first action. Johnson’s argument fails on both points.

First, Johnson asserts that the claims are not the same

because the original action was based on copyright infringement, whereas Johnson II is based on state claims of

unfair competition and misappropriation. But, as Cypress

Hill correctly notes, “[t]wo claims are one for purposes

of res judicata if they are based on the same, or nearly

the same, factual allegations.” Tartt, 453 F.3d at 822 (internal citation omitted); see also Bethesda Lutheran Homes

& Services, Inc. v. Born, 238 F.3d 853, 857 (7th Cir. 2001)

(“[F]or purposes of res judicata a claim is not an argument or a ground but the events claimed to give rise to

a right to a legal remedy”). Here, the facts in both claims

are unquestionably identical. Johnson’s second argument—that the original case was not decided on the

merits because the action should have been dismissed

for lack of subject-matter jurisdiction—fails under Reed
14 Nos. 08-3810, 09-2213 & 10-1733

Elsevier. Thus, the judge correctly granted Cypress

Hill’s motion to dismiss Johnson II, finding the amended

complaint barred by res judicata.

For these reasons, the judgment of the district court

is AFFIRMED.

6-1-11