Sound recording copyrights, authorship and termination rights under the Copyright Act – a series of tweets.



For the majority who would read a long series of tweets, this will be posted to twitter, for those who prefer to read on a blog. Here it is.

Of course, it was still written for twitter, so please forgive the use of twitter-grammar.

  1. As promised, here’s a thread scratching the surface on sound recording copyrights, termination rights under the Copyright Act, and authorship. Appearances by Jay Z, KRS-One, and Sheryl Crow.
  2. Before 1972, sound recordings weren’t protected by U.S. copyright. Copyright extended to the musical work (the composition), but not the performer.
  3. So Otis Redding (or his publisher or heirs) owned a copyright for the song “Respect” but Aretha Franklin didn’t have a copyright for her performance of it.
  4. Sound Recordings Act of 1971 allowed for sound recordings fixed on or after February 15, 1972 to be protected by copyright. https://www.govinfo.gov/content/pkg/STATUTE-85/pdf/STATUTE-85-Pg391.pdf
  5. Congress provided a House Report in 1971 with some guidance of who is an author of a sound recording: “performers, arrangers, and recording experts.” Nope, I’m not sure what recording experts are. https://www.copyright.gov/reports/performance-rights-sound-recordings.pdf
  6. The report also said a record producer can be an author for “setting up the recording session, capturing and electronically processing the sounds, and compiling them and editing them to make the final sound recording.”
  7. However, the report said that sometimes a producer’s contribution is so minimal that only the performance is copyrightable.
  8. Copyright Office says copyright in a sound recording extends to the performers and the “persons responsible for capturing the sounds”. https://www.copyright.gov/circs/circ56.pdf
  9. When the entire Copyright Act was overhauled in 1976, sound recordings were added.  17 U.S.C. § 102(7). https://www.law.cornell.edu/uscode/text/17/102
  10. Sound recordings created on or after January 1, 1978 are governed by the Copyright Act of 1976.
  11. The Copyright Act of 1976 also added the termination right – the inalienable right of an author to “terminate” a transfer and get the rights back to a copyright 35 years after assigning it. https://www.law.cornell.edu/uscode/text/17/203
  12. The right to terminate exists “notwithstanding any agreement to the contrary.” That means when you assign your copyright, the assignee can’t make you give up your termination right by contract.
  13. If an author passes away before the termination right is exercised, the right passes to the author’s statutory heirs.
  14. But authors don’t get their rights back automatically. They must serve proper notice on the parties, within the time frame detailed in 17 U.S.C. § 203.
  15. If the work is a joint work and the authors assigned the rights in a single execution, the right can be terminated by a majority of the authors in that assignment.
  16. Here’s the big catch: if the work was provided as a work for hire, there’s no right to terminate. The company you assigned it to is the statutory “author”.
  17. A typical recording contract will say the recording (sometimes called the “masters”) is a work for hire, and the record company owns for it the life of the copyright.
  18. That part about owning the sound recording for the life of the copyright doesn’t extinguish the right of an artist to terminate and get the copyright. But what about the work for hire clause?
  19. The Copyright Act defines two ways a copyright can be a work for hire: 1) a work created by an employee within the scope of an employment; or 2) a specially commissioned work. 17 U.S.C. 101. https://www.law.cornell.edu/uscode/text/17/101
  20. And the recording artists typically doesn’t have an employer/employee relationship with the record label.
  21. To qualify as a work for hire as a specially commissioned work, the parties must agree in writing that it’s a work for hire – and –
  22.  – these are the works that are included as works that can be specially commissioned works under the work for hire definition:
  23. “a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas”
  24. In other words, sound recordings isn’t included. So many believe that a sound recording can’t be work for hire as a specially commissioned work.
  25. Long story summarized in 240: recording industry got Congress to change the definition in 1999 to include sound recording.  Artists got mad. Congress changed it back in 2000. Statute now says courts must pretend none of that happened.
  26. In 1999, following the controversy over the change, Congress held hearings. There was some interesting testimony: https://theprattlawlibrarian.files.wordpress.com/2012/02/106_379_hearing.pdf
  27. RIAA insisted sound recordings were always considered works for hire as standard practice, and that everyone benefits that way. Its lawyer argued that typically, a contribution to a sound recording is contribution to a collective work.
  28. Sheryl Crow insisted she, as the designated artist on the recording, is the sole author, and her producers, engineers, and sessions musicians are not authors of the recording because they work at her direction.
  29. Register of Copyrights Marybeth Peters testified that a sound recording isn’t typically a work for hire, and that “key contributors” to the recording can be considered authors.
  30. So we’ve been discussing the sound recording/work for hire issue for at least a couple of decades now. Because the termination right hadn’t yet taken effect until 2013, we haven’t had definitive answers.
  31. We know that Michael Jackson’s heirs renegotiated the rights for his albums with Sony. They were probably able to do that because of their leverage of the termination right.
  32. There has been some case law on whether a sound recording can be a work for hire, not involving the termination right.
  33. Lulilama v. Axcess Broadcasting Services, the only appellate decision. Company argued jingles in a sound recording were “part of a motion picture or other audiovisual work.”
  34. 5th Circuit said no, audiovisual works have visual component. Sound recording doesn’t. https://caselaw.findlaw.com/us-5th-circuit/1075263.html
  35. Ballas v. Tedesco. Musician recorded, produced, mixed and mastered “competitive dance music” at request of a dance studio. There was no written agreement. No employment relationship.
  36. District of New Jersey: sound recording isn’t a work for hire because they “do not fit within any of the nine enumerated categories” of specially commissioned work under 17 U.S.C. § 101. https://law.justia.com/cases/federal/district-courts/FSupp2/41/531/2411659/
  37. Staggers v. Real Authentic Sound. Reggae label contracts with producer to record album based on previously existing lyrics. Producer contracts with musician to arrange and perform.
  38. Musician sues record label after he learns that album is being distributed without his consent.
  39. District of Columbia: Can’t decide if there was an employer/employee relationship. But concluded it’s not a specially commissioned work because “a sound recording does not fit within any of the nine categories.” https://law.justia.com/cases/federal/district-courts/FSupp2/77/57/2308491/
  40. Ulloa v. Universal: Demme Ulloa is hanging out in the studio while Jay Z was recording. She starts singing a hook that she comes up with. They liked it, so they recorded her. She doesn’t sign anything.
  41. They tell her they like the hook and they’ll have someone more famous sing it, but instead they used her recording. That’s the chorus to Izzo (H.O.V.A.).
  42. So Demme Ulloa sued to claim authorship of the composition  -and- the sound recording of Izzo(H.O.V.A.).
  43. Universal claimed Ulloa was an employee working with the scope of her employment. They didn’t argue that it was a specially commissioned work, probably because there was no written agreement.
  44. Southern District of New York: the singer wasn’t an employee working within the scope of her employment when she recorded a hook in the studio. It’s a fascinating case. The parties settled. https://www.courtlistener.com/opinion/2504235/ulloa-v-universal-music-and-video-distribution-corp/.
  45. So that’s a handful of cases that specifically addressed whether a sound recording can be a work for hire and all said no. But none did an extensive analysis.
  46. None of those cases had all the big stakeholders in play, like these new class action lawsuits.
  47. There have been a few cases involving authorship in sound recordings:
  48. In Systems XIX v. Parker, KRS-One did a live performance at Maritime Hall, and asked the venue to record the performance. Kris released a couple of live tracks on I Got Next but didn’t credit the venue. https://law.justia.com/cases/federal/district-courts/FSupp2/30/1225/2417383/
  49. The court held that Maritime Hall, as producer, could possibly be a co-author of the recording, and allowed that claim to go forward. https://law.justia.com/cases/federal/district-courts/FSupp2/77/57/2308491/
  50. In Staggers v. Real Authentic Sound, court also found that a producer could be an author of a sound recording. https://law.justia.com/cases/federal/district-courts/FSupp2/77/57/2308491/
  51. I almost forgot about this one: Morill v. Smashing Pumpkins. Court found the band members to be a joint authors of a music video. https://law.justia.com/cases/federal/district-courts/FSupp2/157/1120/2470395/
  52. I mentioned Ulloa v. Universal above, where the woman who sang the hook on Izzo/H.O.V.A. claimed authorship of the sound recording. I think it’s one of the most interesting copyright cases few people talk about.
  53. Since then, there haven’t been a lot of decisions involving authorship of sound recordings, and not a lot of decisions involving termination rights at all. But that’s going to change.
  54. I’m not even getting into the complicated decisions on pre-1978 reversion rights (Steinbeck and Winnie the Pooh). Anybody else want to take that on, please do.
  55. Some other relevant decisions on sound recordings and authorship:
  56. A producer sued for a declaration of ownership of White Stripes recordings. His claims survived a motion to dismiss. Diamond v. Gillis, E.D. Michigan (2005) https://www.leagle.com/decision/20051360357fsupp2d100311260
  57. Brown v. Flowers , 4th Circuit (2006). Court of appeals held that “generic” allegations that he acted as a recording engineer and producer wasn’t enough to plead a joint work of authorship. https://www.scribd.com/document/321214396/Brown-v-Flowers-4th-Cir-2006
  58. That appears to be a problem with the pleadings, however. It’s a mistake to interpret Brown v. Flowers as holding a producer or sound engineer can’t be an author of a sound recording. But it won’t be enough to recite your job title.
  59. Here’s a very new case brought by a sound engineer claiming co-authorship of Prince recordings. A recent decision involves jurisdictional issues. Paisley Park Enterprises v. Boxill (D. Minnesota 2019). Ht @ricksanderslaw
  60. Fun fact, my article Defusing the Time Bomb Once Again: Determining Authorship in a Sound Recording for @thecsusa was cited in briefs in two federal cases, arguing a sound recording can’t be a work for hire under the Copyright Act.
  61. My article. http://tormarklaw.com/defusing-the-time-bomb-once-again/. One brief https://beckermanlegal.com/Lawyer_Copyright_Internet_Law/virgin_thomas_090605DeftResponsePltffsMotPrecludeObjections.pdf
  62. In both cases, the court never reached the issue my article was cited for, but that was the right call for those cases. The recording artists weren’t parties.
  63. There have been a number of key decisions involving termination rights under 17 U.S.C. § 203. Not a lot, but a few important ones.
  64. Victor Willis was the policeman in the Village People, but more importantly to his lawsuit, he wrote Y.M.C.A. and other songs. He sought to terminate his transfer and get the rights back from the publishers.
  65. The court held Willis’s termination notices were valid, and that he could terminate his own interest because he assigned the rights in his own grant.
  66. Scorpio Music v. Willis. S.D. California 2012. Note these decisions involved the compositions, not the sound recordings.  https://law.justia.com/cases/federal/district-courts/california/casdce/3:2011cv01557/357493/30/
  67. The Friday the 13th decision is important, and I wrote about it in a previous newsletter. https://mailchi.mp/f26ae5baa65a/legal-news-to-bring-to-the-thanksgiving-table-2814289?e=611ce199d4
  68. The screenwriter of the original Friday the 13th movie served a notice of termination to get the copyright back, and the studio took him to court instead.
  69. Key difference between the screenplay copyright and a sound recording copyright: a contribution to a motion picture is one of the categories that can be a work for hire as a “specially commissioned work”.
  70. But to qualify as a work for hire under the “specially commissioned” prong, there must be a signed writing that it was a work for hire. And there was none here.
  71. So the movie studio argued that the screenwriter, who mostly worked by himself with occasional input from others, was an employee working within the scope of his employment.
  72. That didn’t go over well. The court held for the screenwriter. Horror Inc v. Miller (D. Connecticut 2018) https://www.courthousenews.com/wp-content/uploads/2018/10/friday.pdf
  73. Okay, all of that brings me to the two new class action lawsuits vs two of the major labels.
  74.  Two new class action lawsuits. One led by John Waite (“Missing You”) and Joe Ely vs. UMG, and one led by David Johansen (Buster Poindexter) vs. Sony, to resolve the critical issues facing recording artists in invoking their rights.
  75. Apparently, the major labels have been rejecting the artists’ notices of termination, claiming they are invalid because the recordings are works for hire, among other reasons. https://www.hollywoodreporter.com/thr-esq/musicians-attempt-class-action-umg-reclaim-rights-recordings-1182853
  76. It’s a bold move for the artists to bring these lawsuits as class actions, on behalf of all recording artists who seek to get control of their copyrights. https://www.documentcloud.org/documents/5726454-Waite-Termination.html
  77. The lawsuits seek declaratory judgment – court orders on key issues record companies rely on to reject the artists’ termination rights. Briefly they are:
  78. The work for hire issue, of course. Artists seek a declaration that sound recordings aren’t “specially commissioned” works under the work for hire definition in the Copyright Act.
  79. Also that artists haven’t created sound recordings as a “contribution to a collective” or a “compilation” under the work for hire definition in the Copyright Act.
  80. That foreign choice of law provisions don’t control. That is, they don’t supersede the termination right under the United States Copyright Act.
  81. The “loan-out company” issue. Record labels argue that if the artist assigned rights through their self-owned corporation, the artists has no right to terminate under the Copyright Act.
  82. That loan-out company issue has been overlooked, but it’s critical because it will affect how artists will want to enter contracts in the future. I wrote about it in previous threads: https://twitter.com/MarkJKings/status/1093549232550637568
  83. The statute of limitations issue. Record companies have been insisting artists can’t claim ownership because the statute of limitations expired, which would be unfair and illogical.
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