Creative Dilemma: Determining Authorship Rights in Studio Session Works

A recording session is generally a team effort, with artist, engineer and producer working together to create sound recording masters. However, unless set forth in written agreements, just who owns the rights in the works may not be clear. For example, what if an engineer with creative input claims to be a joint author? Even less clear may be who owns the rights if a visitor to a recording session becomes a contributor to a track.

Such situations may raise claims of joint authorship and/or copyright infringement, among other things. (A joint copyright owner can't sue a co-owner for infringement, but a court may recognize a joint authorship claim as a distinct alternative from an infringement claim in the same case.) Defendants in these actions may claim an implied license, that the visitor's contribution wasn't original enough to be copyrightable or that the contribution was a work-for-hire under that the defendants own.

These arguments were recently tested in a case involving a recording session for the popular hip-hop artist Jay-Z. Demme Ulloa had been invited to a recording session by Samuel Barnes, who served as a producer for Jay-Z. When Ulloa arrived at the studio, Jay-Z was recording the track “Izzo (H.O.V.A.)” (one not produced by Barnes) that was later released on Jay-Z's “Blueprint” album. The song was made up of a Jay-Z rap over an instrumental riff from the Jackson Five recording “I Want You Back.” While visiting at the studio, Ulloa came up with a countermelody to the instrumental riff that she spontaneously sang with the “Izzo” rap. Jay-Z then asked Ulloa to record the vocal phrase for possible use with the finished recording.

No terms for any use of the vocal phrase were discussed at the studio, although Ulloa claimed to have later discussed with Barnes receiving credit if her voice appeared in the finished recording. Ulloa later contacted the American Federation of Television and Radio Artists (AFTRA) to help her obtain payment for her work on the released version of “Izzo.” Though Ulloa wasn't an AFTRA member, the union tried unsuccessfully to secure the monies for her. Ulloa then contacted an attorney who, after several attempts, prompted the payment to AFTRA. Ulloa nevertheless returned the check and filed suit in Manhattan federal court, naming as defendants Jay-Z, the labels Island Def Jam and Roc-A-Fella Records, and distributor Universal Music and Video.

Originality

Ulloa first claimed infringement of her copyright in both the sound recording and in the melody of the vocal phrase. The defendants argued that the vocal phrase wasn't copyrightable because it was derived from the instrumental riff. The district court disagreed, emphasizing: “Just as courts in this district have found that a harmony added to a preexisting melody is not unoriginal as a matter of law … this Court declines to find that a countermelody is unoriginal as a matter of law.” Illoa v. Universal Music and Video Distribution Corp., 01-9583. And the court acknowledged that the threshold for originality in the U.S. Court of Appeals for the Second Circuit, within which the Manhattan federal court resided, is “modest, minimal.” But the district court denied Ulloa's motion for summary judgment on this issue on the ground that a reasonable factfinder “could find either the presence or absence of the degree of originality required to confer copyrightability.”

Work-for-Hire Defense

The defendants alternatively argued that Ulloa's vocal phrase had been created as work for hire within the meaning of the provisions of Sec. 201(b) of the Copyright Act. The district court denied the defendants' motion for summary judgment on this issue by using several of the work-for-hire factors listed by the U.S. Supreme Court in Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S. Ct. 2166 (1989) as follows:

• The hiring party's right to control the manner and means of creation. Ulloa was a guest at the recording studio who created the vocal phrase with no input from the defendants, other than a comment that she was singing the rap lyrics in the wrong order.
• The skill required to create the work. Though not a highly skilled musician, Ulloa had “a talent for singing that exceeds the ability of the average person.”
• Whether the hiring party had the right to assign additional projects to the hired party. Even assuming the defendants “assigned” Ulloa to the “Izzo” project, they did not have the right to assign her to other projects.
• Employee benefits. The defendants provided Ulloa none.
• The tax treatment of Ulloa (the center of the defendants' work-for-hire argument). The fact that Ulloa filled out a W-4 form from which the defendants withheld taxes from the checks they sent AFTRA wasn't decisive. According to the court: “Because Plaintiff was under the impression that she had to complete the form in order to obtain assistance [from AFTRA] in her quest to contact Defendants, the Court does not believe it is indicative of Plaintiff's belief that she was an employee of Defendants. … Also, because the tax treatment of the Plaintiff largely occurred after litigation was threatened, it provides little, if any, persuasive evidence of the parties' contemporaneous belief of an employment relationship.”

Implied License Argument

The defendants also argued that Ulloa had given them an implied license to use her vocal phrase. But the district court found that there was no meeting of the minds. That Ulloa had left the physical recording at the studio made no difference considering that she had been told that that her vocal phrase might be re-recorded by another singer. The court added: “Even assuming that Plaintiff's conduct created an implied license, Plaintiff clearly terminated any implied license prior to filing this suit and is thus still entitled to damages for copyright infringement.”

(In another recent case, the U.S. District Court for the Eastern District of Pennsylvania found an implied license had been granted by a songwriter who gave his composition to hip-hop producers hoping it would be used on an album. Lowe v. Loud Records, 01-1797.)

Joint Authorship Claim

An original contribution to a work isn't by itself enough to support a joint authorship claim. Rather, under Sec. 101 of the Copyright Act, joint authors must have the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

Ulloa argued in part that Jay Z had “recognized that [her] melody would be merged with his contributions into an inseparable whole.” But the district court noted that: “The parties must intend to share the rights of authorship rather than merely intend to enter into a relationship that results in the creation of a copyrightable work. … As Plaintiff has proffered no evidence to support an argument that Jay Z ever intended to share authorship with the Plaintiff, Defendant's motion for summary judgment on this issue is granted.”

Given the court's analysis of Ulloa's claims, these types of cases are highly fact-specific. Still, the Ulloa case offers practical guidelines that parties may want to consider before they become involved in such recording-session disputes.

A recording session is generally a team effort, with artist, engineer and producer working together to create sound recording masters. However, unless set forth in written agreements, just who owns the rights in the works may not be clear. For example, what if an engineer with creative input claims to be a joint author? Even less clear may be who owns the rights if a visitor to a recording session becomes a contributor to a track.

Such situations may raise claims of joint authorship and/or copyright infringement, among other things. (A joint copyright owner can't sue a co-owner for infringement, but a court may recognize a joint authorship claim as a distinct alternative from an infringement claim in the same case.) Defendants in these actions may claim an implied license, that the visitor's contribution wasn't original enough to be copyrightable or that the contribution was a work-for-hire under that the defendants own.

These arguments were recently tested in a case involving a recording session for the popular hip-hop artist Jay-Z. Demme Ulloa had been invited to a recording session by Samuel Barnes, who served as a producer for Jay-Z. When Ulloa arrived at the studio, Jay-Z was recording the track “Izzo (H.O.V.A.)” (one not produced by Barnes) that was later released on Jay-Z's “Blueprint” album. The song was made up of a Jay-Z rap over an instrumental riff from the Jackson Five recording “I Want You Back.” While visiting at the studio, Ulloa came up with a countermelody to the instrumental riff that she spontaneously sang with the “Izzo” rap. Jay-Z then asked Ulloa to record the vocal phrase for possible use with the finished recording.

No terms for any use of the vocal phrase were discussed at the studio, although Ulloa claimed to have later discussed with Barnes receiving credit if her voice appeared in the finished recording. Ulloa later contacted the American Federation of Television and Radio Artists (AFTRA) to help her obtain payment for her work on the released version of “Izzo.” Though Ulloa wasn't an AFTRA member, the union tried unsuccessfully to secure the monies for her. Ulloa then contacted an attorney who, after several attempts, prompted the payment to AFTRA. Ulloa nevertheless returned the check and filed suit in Manhattan federal court, naming as defendants Jay-Z, the labels Island Def Jam and Roc-A-Fella Records, and distributor Universal Music and Video.

Originality

Ulloa first claimed infringement of her copyright in both the sound recording and in the melody of the vocal phrase. The defendants argued that the vocal phrase wasn't copyrightable because it was derived from the instrumental riff. The district court disagreed, emphasizing: “Just as courts in this district have found that a harmony added to a preexisting melody is not unoriginal as a matter of law … this Court declines to find that a countermelody is unoriginal as a matter of law.” Illoa v. Universal Music and Video Distribution Corp., 01-9583. And the court acknowledged that the threshold for originality in the U.S. Court of Appeals for the Second Circuit, within which the Manhattan federal court resided, is “modest, minimal.” But the district court denied Ulloa's motion for summary judgment on this issue on the ground that a reasonable factfinder “could find either the presence or absence of the degree of originality required to confer copyrightability.”

Work-for-Hire Defense

The defendants alternatively argued that Ulloa's vocal phrase had been created as work for hire within the meaning of the provisions of Sec. 201(b) of the Copyright Act. The district court denied the defendants' motion for summary judgment on this issue by using several of the work-for-hire factors listed by the U.S. Supreme Court in Community for Creative Non-Violence v. Reid , 490 U.S. 730, 109 S. Ct. 2166 (1989) as follows:

• The hiring party's right to control the manner and means of creation. Ulloa was a guest at the recording studio who created the vocal phrase with no input from the defendants, other than a comment that she was singing the rap lyrics in the wrong order.
• The skill required to create the work. Though not a highly skilled musician, Ulloa had “a talent for singing that exceeds the ability of the average person.”
• Whether the hiring party had the right to assign additional projects to the hired party. Even assuming the defendants “assigned” Ulloa to the “Izzo” project, they did not have the right to assign her to other projects.
• Employee benefits. The defendants provided Ulloa none.
• The tax treatment of Ulloa (the center of the defendants' work-for-hire argument). The fact that Ulloa filled out a W-4 form from which the defendants withheld taxes from the checks they sent AFTRA wasn't decisive. According to the court: “Because Plaintiff was under the impression that she had to complete the form in order to obtain assistance [from AFTRA] in her quest to contact Defendants, the Court does not believe it is indicative of Plaintiff's belief that she was an employee of Defendants. … Also, because the tax treatment of the Plaintiff largely occurred after litigation was threatened, it provides little, if any, persuasive evidence of the parties' contemporaneous belief of an employment relationship.”

Implied License Argument

The defendants also argued that Ulloa had given them an implied license to use her vocal phrase. But the district court found that there was no meeting of the minds. That Ulloa had left the physical recording at the studio made no difference considering that she had been told that that her vocal phrase might be re-recorded by another singer. The court added: “Even assuming that Plaintiff's conduct created an implied license, Plaintiff clearly terminated any implied license prior to filing this suit and is thus still entitled to damages for copyright infringement.”

(In another recent case, the U.S. District Court for the Eastern District of Pennsylvania found an implied license had been granted by a songwriter who gave his composition to hip-hop producers hoping it would be used on an album. Lowe v. Loud Records, 01-1797.)

Joint Authorship Claim

An original contribution to a work isn't by itself enough to support a joint authorship claim. Rather, under Sec. 101 of the Copyright Act, joint authors must have the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.

Ulloa argued in part that Jay Z had “recognized that [her] melody would be merged with his contributions into an inseparable whole.” But the district court noted that: “The parties must intend to share the rights of authorship rather than merely intend to enter into a relationship that results in the creation of a copyrightable work. … As Plaintiff has proffered no evidence to support an argument that Jay Z ever intended to share authorship with the Plaintiff, Defendant's motion for summary judgment on this issue is granted.”

Given the court's analysis of Ulloa's claims, these types of cases are highly fact-specific. Still, the Ulloa case offers practical guidelines that parties may want to consider before they become involved in such recording-session disputes.