Abkco Music, Inc. v. Stephen LavereAbkco Music, Inc. v. Stephen Lavere
Donald S. Zakarin (argued), Pryor, Cashman, Sherman, & Flynn, New York, New York, and Max J. Sprecher, Lavely & Singer, Los Angeles, California, for the plaintiff-counter-defendant-appellee.
Appeal from the United States District Court for the Central District of California; Terry J. Hatter, Jr., Chief District Judge, Presiding. D.C. No. CV-95-07682-TJH
Before: Pamela Ann Rymer and Raymond C. Fisher, Circuit Judges, and Lloyd D. George, Senior District Judge*.
RYMER, Circuit Judge:
The ultimate question in this case is whether a phonorecord distributed in the late 1930s “published” the underlying work such that the clock started ticking under the Copyright Act of 1909.1 In La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995), we held that it did. However, in 1997 Congress amended the Copyright Act to provide that distribution of a phonorecord before January 1, 1978 shall not constitute a publication of the musical work. See
ABKCO Music, Inc., whose library includes two Rolling Stones hits -Love in Vain, released in 1969, and Stop Breakin’ Down, released in 1972 -sought a ruling that the versions of these two songs recorded by Robert Johnson and distributed on a phonograph in the late 1930s were in the public domain under La Cienega. The district court determined on summary judgment that the Johnson versions of Love in Vain and Stop Breakin’ Down irrevocably entered the public domain when the copyrights were not renewed within the last year of the initial 28-year term of copyright protection. Stephen LaVere, Mimosa Records Production, Inc., d/b/a King of Spades Music, and Delta Haze, Inc., who claim legal title to the Johnson copyrights, appeal. We now join the Sixth Circuit in concluding that the 1997 amendment applies to pending cases.2 Accordingly,
Robert Johnson, a blues artist, recorded 29 songs before he was murdered in 1938. Sixteen were recorded in a November 1936 session, and, after the 1936 recordings were successfully distributed by Vocalion Records, Johnson returned to the studio in June 1937 to record 13 more songs including Love in Vain and Stop Breakin’ Down. Vocalion released Stop Breakin’ Down on March 20, 1938 and Love in Vain on February 9, 1939. No copyright registration for either song was filed. In the early 1960s, Columbia Records re-released Johnson‘s recordings.
In 1969, The Rolling Stones released an album called Let It Bleed, which contained an adapted version of Love in Vain, and in 1972, the Rolling Stones adapted Stop Breakin’ Down for their album Exile on Main Street. ABKCO‘s predecessor filed a copyright registration on Love in Vain in May 1970 and ABKCO filed a copyright registration claiming protection for The Rolling Stones’ adaptation and arrangement of Stop Breakin’ Down in 1972.
Meanwhile, LaVere became interested in Johnson‘s music and by 1974 had located Carrie Thompson, Johnson‘s sister, who was thought to be his only surviving heir. LaVere agreed to try to generate income from Johnson‘s legacy and to pay Thompson (on behalf of Johnson heirs) fifty percent of all royalties collected in exchange for her assignment to him of her copyright interests in Johnson‘s works. LaVere formed King of Spades Music, a publishing company to administer the Johnson compositions and copyrights. Over time he assigned his copyright interests to Mimosa, which in turn assigned them to Delta Haze (whose dba is King of Spades Music).
In 1990, Columbia Records released a two-CD boxed set of Johnson‘s recordings entitled Robert Johnson -The Complete Recordings. Love in Vain and Stop Breakin’ Down were included. It was quite successful. Columbia evidently recognized Johnson‘s common law copyrights as, eventually, did other successful pop artists who adapted Johnson‘s works. However, ABKCO did not. LaVere filed a copyright registration for the Columbia release in 1991. In February 1993 Delta Haze demanded that ABKCO cease and desist from unlicensed uses of the Johnson songs. Protracted negotiations followed. When it became clear they were going nowhere and Delta Haze threatened to sue in the summer of 1995, ABCKO filed this action for declaratory relief on November 9, 1995. It sought an order that the Johnson versions of Love in Vain and Stop Breakin’ Down are in the public domain under La Cienega. Delta Haze counterclaimed for a declaration that no protectable copyright interest exists in The Rolling Stones’ versions of Love in Vain and Stop Breakin’ Down and that it, rather than ABKCO, is the sole owner of the legal copyright in these compositions.
Delta Haze moved to dismiss pursuant to
Delta Haze timely appealed.
II
We first address two arguments advanced by Delta Haze that would require dismissal, if correct.
A
B
Delta Haze also argues that ABKCO‘s action should have been dismissed for failure to join the Johnson Estate, the beneficial owner of the copyrights, as an indispensable party under
III
Turning to the central issue on appeal, Delta Haze argues that applying
A
This issue has a long history, stretching back to 1831, when Congress first extended copyright protection to original musical compositions. At that time, there was no technology for mechanically reproducing music, and Congress merely protected the copying of the sheet music. See Goldstein v. California, 412 U.S. 546, 564 (1973). But in the latter half of the nineteenth century, piano rolls were invented. They were an early form of mechanical reproduction of specific musical performances, which the Supreme Court held in 1908 did not constitute a “copy” of the copyrighted musical composition because they were not written or printed in tangible form. White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 17 (1908). Put another way, piano rolls were a performance, rather than a publication, of a musical composition. A year after White-Smith, Congress passed the 1909 Copyright Act, giving composers of musical compositions control over recordings of their creations. See Goldstein, 412 U.S. at 565-66. However, the intent of Congress in the 1909 Act was not to accord recordings the same copyright status as a written score, but
only to establish the limits of the composer‘s right; composers were to have control over the recordings themselves. Nowhere does the report indicate that Congress considered records as anything but a component part of a machine, capable of reproducing an original composition, or that Congress intended records, as renderings of original artistic performance, to be free from state control.
Id. at 566 (emphasis in original). The 1909 Copyright Act governed rights in musical compositions until January 1, 1978 (the effective date of the 1976 Copyright Act). See La Cienega, 53 F.3d at 952 n.1.
“Under the 1909 Act, an unpublished work was protected by state common law copyright from the moment of its creation until it was either published or until it received protection under the federal copyright scheme.” Id. at 952. When a work was published, it lost common law protection. See id. at 953. The owner could obtain federal protection for the published work by complying with the 1909 Act‘s requirements; otherwise, the work entered the public domain. See Twin Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165 (9th Cir. 1996). Under S 9 of the 1909 Act, “[a]ny person . . . may secure copyright for his work by publication thereof with the notice of copyright required by this title.” Id.
The 1909 Act did not define the term “publication“; however, the Second Circuit held in Rosette v. Rainbo Record Mfg. Corp., 546 F.2d 461 (2d Cir. 1976), that the sale of phonorecords in the 1950s did not constitute publication. As explained more fully by the district court, Rosette v. Rainbo Record Manufacturing Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), the drafters of the 1909 Act did not intend to extend copyright protection to mechanical reproductions of musical compositions; rather, they intended “only to give the composer or copyright proprietor the control, in accordance with the provisions of the bill, of the manufacture and use of such [mechanical reproductions].” Id. at 1190 (quoting House Reports, 60th Cong. 2d Sess., Vol. 1, at 9 (1909)). Therefore, the 1909 Act did not overrule White-Smith, see id. at 1191, and “a performance of an unpublished musical manuscript [on a phonograph record] is not a publication.” Id. at 1190. As the court noted, this “accords with the expressed view of the Copyright Bar and the music industry.” Id.
Apart from a handful of district court opinions holding that release of a phonorecord published the underlying work,3 Rosette remained the leading case until we rendered our decision in La Cienega in 1995. There, La Cienega Music Company accused the band ZZ Top and others of copying a song it owned called “Boogie Chillen.” La Cienega had released recordings of different versions of this song in 1948, 1950, and 1970; ZZ Top released an album in 1973 with a song it called “La Grange” that was similar to Boogie Chillen and became ZZ Top‘s signature song. Its position was that La Cienega‘s release of Boogie Chillen on phonorecords was a publication; La Cienega argued that publication of the songs did not occur until it filed a notice of copyright with the Copyright Office in 1967, 1970, and 1992 respectively. See La Cienega, 53 F.3d at 953. We declined to follow Rosette, holding instead that selling a recording constitutes “publication” under the Copyright Act of 1909.
However, in November 1997, the Copyright Act was amended to provide that “[t]he distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.”
Thus, the question that matters is whether
B
LaVere contends that we need not be concerned with retroactivity at all, because the purpose and effect of
If [the statute] were to be characterized in the latter fashion [as a “substantial change in the law“], its retroactive application would pose a series of potential constitutional problems. If however [the statute] merely clarifies what [the prior statute] was originally intended to mean . . . it has no retroactive effect that might be called into constitutional question.
Beverly Community Hosp. Ass‘n. v. Belshe, 132 F.3d 1259, 1265 (9th Cir. 1997). “Normally, when an amendment is deemed clarifying rather than substantive, it is applied retroactively.” United States v. Donaghe, 50 F.3d 608, 612 (9th Cir. 1994). “Given the extraordinary difficulty that the courts have found in divining the intent of the original Congress, a decision by the current Congress to intervene by expressly clarifying the meaning of [the statute] is worthy of real deference . . . . We therefore honor Congress’ ‘clarification’ label and accept [the new] provisions as a statement of what [the statute] has meant all along.” Beverly Community Hosp., 132 F.3d at 1266.
There is a good argument that the 1997 amendment simply clarifies what the meaning of the 1909 Act was all along -namely, that the distribution of phonorecords did not constitute publication of the underlying works. As the House Report on the 1997 amendment indicates, the bill that resulted in
The La Cienega decision has, therefore, placed a cloud over the legal status of a large number of musical works recorded and sold before January 1, 1978. Moreover, it has called into question the long established interpretation of the Copyright Office. It is the intent of this section to remove the cloud and bring the law into conformity with the Second Circuit opinion and Copyright office practices.
Id. at 5.
From this record it is evident that Congress believed La Cienega was aberrational, that Rosette was the accepted and controlling interpretation, and that
However, ABKCO insists that
It is clear from the language employed that S 303(b) should be applied to pending cases. First, the subsection obviously applies to pre-enactment conduct. In fact, it applies only to the distribution of records prior to January 1, 1978. Thus, applying the statute to pending cases has no impact on the conduct that is the subject of the subsection. Second, the subsection provides that the distribution of phonorecords “shall not for any purpose constitute a publication.” This court would be defying the express mandate of the statute if it were to decide on de novo review that phonorecord distribution constitutes publication. Finally, the presumption against retroactive application of statutes is based, in part, on a hesitancy to reverse settled expectations. In enacting S 303(b), however, Congress has resolved a problem of unsettled expectations that had arisen from the circuit split. We conclude that S 303(b) should be applied in resolving the present appeal.
Id. at 824 (citations omitted). We agree, and hold that
IV
Delta Haze also asks for reversal of the district court‘s denial of its cross-motion for summary judgment and, failing that, argues that judgment should have been granted on its counterclaims. To the extent that its cross-motion is the mirror image of ABKCO‘s, Delta Haze is entitled to a judgment declaring that the Johnson versions of Love in Vain and Stop Breakin’ Down did not enter the public domain when the phonorecords on which they were recorded were released in 1938 and 1939. Beyond this, however, we believe the district court is in a better position than we to sort out the issues that remain. For example, Delta Haze argues that ABKCO can have no ownership interest in The Rolling Stones’ versions of the two works because The Rolling Stones added no original material. This may, or may not, raise triable issues -a point that we assume the district court has never considered, given its ruling that the Johnson works were in the public domain when The Rolling Stones made its adaptations.
ABKCO argues that dismissal of Delta Haze‘s counterclaim was proper because it never threatened to sue for infringement, therefore there was no controversy between them to give the district court subject matter jurisdiction. But we cannot be certain of this, for the counterclaims appear to contest ABKCO‘s claim to any protectable interest in the adaptation performed by the Rolling Stones. In addition, ABKCO contends that whatever claim Delta Haze might be able to state is time-barred. Again, these issues are best left to the district court on remand.
Because we cannot tell from the district court‘s order why it dismissed the counterclaims (it could simply have been that the counterclaims necessarily fell given the decision that the Johnson versions were in the public domain), we vacate the order dismissing the counterclaims. In doing so, we intimate no view one way or the other on the merits of the counterclaims or any motions that may be made with respect to them.
To summarize: we reverse the order and judgment granting ABKCO‘s motion for summary judgment; we order judgment to be entered for Delta Haze that the Robert Johnson versions of Love in Vain and Stop Breakin’ Down did not enter the public domain when phonorecords embodying those works were released before 1978; and we vacate the judgment for ABKCO on Delta Haze‘s counterclaims.
REVERSED and REMANDED.
Notes
Amended S 303 now provides: (a) Copyright in a work created before January 1, 1978, but not theretofore in the public domain or copyrighted, subsists from January 1, 1978, and endures for the term provided by section 302. In no case, however, shall the term of copyright in such a work expire before December 31, 2002; and, if the work is pub lished on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.
(b) The distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.
Pub. L. 105-80, S 11, Nov. 13, 1997, 111 Stat. 1534; Pub. L. 105-298, Title I, S 102(c), Oct. 27, 1998, 112 Stat. 2827.