Tennessee Appeals Court Affirms Rights Of Hank Williams' Heirs to Radio Concerts

Courts have broadly interpreted in favor of record companies the language in agreements with artists that states the label will be able to reproduce the artist's recordings “by any method now or hereafter known.” But the Court of Appeals of Tennessee, at Nashville, decided that neither the record company to which the late country legend Hank Williams had signed, nor a company that obtained rights in the physical masters of Williams' 1950s radio performances had the right to exploit those recordings. Polygram Records Inc. v. Legacy Entertainment LLC, M2003-02608-COA-R3-CV.

Williams had been bound to MGM Records under an exclusive deal from 1947 to early 1953. In 1951 and 1952, Williams and his band, The Drifting Cowboys, performed live and on pre-recorded acetate discs for the “Mother's Best Flour” program on WSM radio. WSM decided to discard the acetates when moving from its downtown-Nashville offices in the 1960s. A photographer for the station then took possession of the recordings and sold them to Hillous Butrum, a former Drifting Cowboy. Butrum removed skips and hisses, added voiceovers, more music and registered the re-mixes for copyrights.

Legacy Entertainment bought the re-mixes from Butrum in 1997. When Legacy prepared to release the re-mixes on CD, Polygram Records, the successor to MGM Records, filed suit in Davidson County Chancery Court arguing it had the exclusive rights to the WSM recordings under MGM's contract with Williams. Williams's heirs, Jett Williams and Hank Williams Jr., joined Polygram as plaintiffs. The trial court found that it was the Williams heirs, rather than Polygram or Legacy, who owned the rights to the WSM performances.

Affirming, the Court of Appeals quipped: “The chain of title Legacy relies on comprises a long and windy road during which there was a brief stop in a trash can at a radio station. If a song were written about this matter favorable to Legacy's claim, it might be entitled, 'I Found a Gold Mine in the Radio Station Trash.' Indeed, although Legacy may have acquired certain tangible rights to WSM's acetate tapes, and the performances by Hank Williams from the 40s and 50s embodied therein are golden, the gold attendant to Hank Williams' performances may not be mined by Legacy. Accordingly, an appropriate title attributable to Legacy's claim would be, 'Your Bucket Has a Hole in It.'”

The Court of Appeals went on to note that the Williams acetates had been made only for broadcast on WSM, which had used the recordings for no other purpose. In addition, there was no evidence that Butrum or the station photographer who sold them to Butrum had any intangible rights in Williams' original acetate performances. The court explained: “Possession of a tangible embodiment of a work or performance such as the recordings at issue conveys no rights or ownership interests to the intangible rights embodied therein, especially the right to commercially exploit the performances embodied therein. … [I]t is evident Butrum's copyrights only pertain to the enhancements by Butrum.”

Legacy further argued that it had the right to use Hank Williams' name and likeness to exploit the recordings because Williams hadn't specifically reserved those rights in his contract with WSM. But the court of appeals emphasized: “We are unwilling to infer, indeed to jump to the illogical conclusion that Hank Williams assigned these rights without limitation based on the mere fact his heirs cannot establish that the 1951 informal agreement with WSM provided to the contrary.”

[Tennessee's right of publicity statute, Tenn. Code Ann. Sec. 47-25-1103, states:

(a) Every individual has a property right in the use of that person's name, photograph, or likeness in any medium in any manner.

(b) The individual rights provided for in subsection (a) constitute property rights and are freely assignable and licensable, and do not expire upon the death of the individual so protected, whether or not such rights were commercially exploited by the individual during the individual's lifetime, but shall be descendible to the executors, assigns, heirs, or devisees of the individual so protected by this part.]

Polygram claimed the rights to the WSM recordings under William's MGM contract, which stated in part that MGM “shall have the right to make records or other reproductions of the perfor-mances embodied in such recordings by any method now or hereafter known.” The contract stated that it covered Williams' exclusive personal services “for the purpose of making phonograph records, as [MGM] may require” and that “during the period of this contract [Williams] will not perform for the purpose of making phonograph records for any person other than [MGM] … All recordings and all records and reproductions made therefrom, together with the performances embodied therein, shall be entirely our property, free of any claims whatsoever by you or any person deriving any right or interest from you.”

Nevertheless, the court of appeals concluded: “In considering the entire contract, we find it significant that the first page of the contract places its focus on 'recordings made for the purpose of making phonograph records.' … [N]othing in the contract affords MGM or Polygram the present right to exploit recordings of performances by Hank Williams that were for purposes other than producing phonograph records, such as a pre-recorded radio broadcast. Moreover, there is no evidence in the record to establish that the Mother's Best Flour performances were recorded for the purpose of making phonograph records.”

[In a footnote, the court of appeals noted of the re-recording restriction in the MGM/Williams agreement: "We recognize that another provision of the MGM agreement precluded Williams from performing any musical compositions recorded under the MGM agreement "for the purpose of making phonograph records, within five years after our recording is made. ... The five year exclusivity period has long since expired; thus the provision is inapplicable to the matters at issue, and we decline to volunteer an advisory opinion."]

The Tennessee court's ruling demonstrates that, despite the broad interpretation that has been given to record-company rights in artist recordings, there nevertheless may be circumstances in which the label, rather than the artist, must specifically cite their right to certain uses of the artist's recordings.

Courts have broadly interpreted in favor of record companies the language in agreements with artists that states the label will be able to reproduce the artist's recordings “by any method now or hereafter known.” But the Court of Appeals of Tennessee, at Nashville, decided that neither the record company to which the late country legend Hank Williams had signed, nor a company that obtained rights in the physical masters of Williams' 1950s radio performances had the right to exploit those recordings. Polygram Records Inc. v. Legacy Entertainment LLC, M2003-02608-COA-R3-CV.

Williams had been bound to MGM Records under an exclusive deal from 1947 to early 1953. In 1951 and 1952, Williams and his band, The Drifting Cowboys, performed live and on pre-recorded acetate discs for the “Mother's Best Flour” program on WSM radio. WSM decided to discard the acetates when moving from its downtown-Nashville offices in the 1960s. A photographer for the station then took possession of the recordings and sold them to Hillous Butrum, a former Drifting Cowboy. Butrum removed skips and hisses, added voiceovers, more music and registered the re-mixes for copyrights.

Legacy Entertainment bought the re-mixes from Butrum in 1997. When Legacy prepared to release the re-mixes on CD, Polygram Records, the successor to MGM Records, filed suit in Davidson County Chancery Court arguing it had the exclusive rights to the WSM recordings under MGM's contract with Williams. Williams's heirs, Jett Williams and Hank Williams Jr., joined Polygram as plaintiffs. The trial court found that it was the Williams heirs, rather than Polygram or Legacy, who owned the rights to the WSM performances.

Affirming, the Court of Appeals quipped: “The chain of title Legacy relies on comprises a long and windy road during which there was a brief stop in a trash can at a radio station. If a song were written about this matter favorable to Legacy's claim, it might be entitled, 'I Found a Gold Mine in the Radio Station Trash.' Indeed, although Legacy may have acquired certain tangible rights to WSM's acetate tapes, and the performances by Hank Williams from the 40s and 50s embodied therein are golden, the gold attendant to Hank Williams' performances may not be mined by Legacy. Accordingly, an appropriate title attributable to Legacy's claim would be, 'Your Bucket Has a Hole in It.'”

The Court of Appeals went on to note that the Williams acetates had been made only for broadcast on WSM, which had used the recordings for no other purpose. In addition, there was no evidence that Butrum or the station photographer who sold them to Butrum had any intangible rights in Williams' original acetate performances. The court explained: “Possession of a tangible embodiment of a work or performance such as the recordings at issue conveys no rights or ownership interests to the intangible rights embodied therein, especially the right to commercially exploit the performances embodied therein. … [I]t is evident Butrum's copyrights only pertain to the enhancements by Butrum.”

Legacy further argued that it had the right to use Hank Williams' name and likeness to exploit the recordings because Williams hadn't specifically reserved those rights in his contract with WSM. But the court of appeals emphasized: “We are unwilling to infer, indeed to jump to the illogical conclusion that Hank Williams assigned these rights without limitation based on the mere fact his heirs cannot establish that the 1951 informal agreement with WSM provided to the contrary.”

[Tennessee's right of publicity statute, Tenn. Code Ann. Sec. 47-25-1103, states:

(a) Every individual has a property right in the use of that person's name, photograph, or likeness in any medium in any manner.

(b) The individual rights provided for in subsection (a) constitute property rights and are freely assignable and licensable, and do not expire upon the death of the individual so protected, whether or not such rights were commercially exploited by the individual during the individual's lifetime, but shall be descendible to the executors, assigns, heirs, or devisees of the individual so protected by this part.]

Polygram claimed the rights to the WSM recordings under William's MGM contract, which stated in part that MGM “shall have the right to make records or other reproductions of the perfor-mances embodied in such recordings by any method now or hereafter known.” The contract stated that it covered Williams' exclusive personal services “for the purpose of making phonograph records, as [MGM] may require” and that “during the period of this contract [Williams] will not perform for the purpose of making phonograph records for any person other than [MGM] … All recordings and all records and reproductions made therefrom, together with the performances embodied therein, shall be entirely our property, free of any claims whatsoever by you or any person deriving any right or interest from you.”

Nevertheless, the court of appeals concluded: “In considering the entire contract, we find it significant that the first page of the contract places its focus on 'recordings made for the purpose of making phonograph records.' … [N]othing in the contract affords MGM or Polygram the present right to exploit recordings of performances by Hank Williams that were for purposes other than producing phonograph records, such as a pre-recorded radio broadcast. Moreover, there is no evidence in the record to establish that the Mother's Best Flour performances were recorded for the purpose of making phonograph records.”

[In a footnote, the court of appeals noted of the re-recording restriction in the MGM/Williams agreement: "We recognize that another provision of the MGM agreement precluded Williams from performing any musical compositions recorded under the MGM agreement "for the purpose of making phonograph records, within five years after our recording is made. ... The five year exclusivity period has long since expired; thus the provision is inapplicable to the matters at issue, and we decline to volunteer an advisory opinion."]

The Tennessee court's ruling demonstrates that, despite the broad interpretation that has been given to record-company rights in artist recordings, there nevertheless may be circumstances in which the label, rather than the artist, must specifically cite their right to certain uses of the artist's recordings.