Bit Parts

Copyright Renewal/'Posthumous Work'

A Manhattan federal district court decided in a complex case that the short-story 'Chitty Chitty Bang Bang' wasn't a posthumous work under the Copyright Act, even though the story's British author Ian Fleming died before the work was published. Legislator 1357 Ltd. v. Metro-Goldwyn-Mayer Inc. (MGM), 04 Civ. 3951(MGC). The late author's nieces sued claiming ownership of the 1993 renewal term in the story and infringement through the defendant's recent distribution of the film 'Chitty Chitty Bang Bang,' originally made under a rights assignment in the 1960s. The Copyright Act doesn't define 'posthumous work.' The movie studio argued that the story was one, whose renewal rights therefore vested in the book trust that Fleming set up to grant the TV and film rights that the studio subsequently obtained. But the district court stated: 'In addition to assigning the copyright and entering into contracts during his lifetime [for the story], Ian Fleming revised manuscripts for publication. ' The rights in the renewal term therefore vested in the trustees of the Will Trust as executors of Fleming's estate and not, as defendants contend, in the trustees of the Book Trust.' However, the court ruled, among other things, that MGM could pursue an equitable-estoppel defense due to the 'lengthy delay in filing this [2004] action, as well as defendants' good faith belief that plaintiffs viewed them as the owners of the film rights in the Work.'

Radio Broadcasting/Sponsored Airplay

The U.S. District Court for the Middle District of Tennessee declined to dismiss counterclaims raised by defendants in a suit a Nashville radio station filed seeking payment for sponsored airplay of music. WYCQ Inc. v. National Music Marketing Inc. (NMM), 3:05-0979. Promotion company NMM had agreed to buy time for its clients' music to be played on WYCQ and affiliated stations. WYCQ later filed suit claiming that NMM had failed to pay by a promised date the full amount owed for the 'spins.' The radio station's complaint alleged breach of contract, conversion and fraudulent misrepresentation. Air-time buys are allowed under federal anti-payola laws, which mandate that stations inform listeners of the airplay paid sponsorship. NMM alleged in its counterclaims to WYCQ's suit that some WYCQ practices violated the anti-payola statutes, 47 U.S.C. Secs. 317 and 508. WYCQ responded that NMM lacked standing to pursue the counterclaims because the federal statutes offered no private cause of action. The district court noted: '[E]ven if WYCQ had somehow violated anti-payola statutes in the performance of its contract with NMM, such violation likely would be so ancillary to the underlying contract as to have no impact on it.' But the court added that NMM's 'breach of contract and conversion claims do not stand on statutory violations alone. ' Instead, they appear to be garden-variety allegations that WYCQ (1) breached the parties' contract by improperly conducting contests sponsored by NMM; and (2) converted for its own use money that NMM had allotted for the contests. ' Thus, while WYCQ has properly called into question one of the bases for these claims, it cannot succeed in dismissing them altogether, as they rest on other grounds.'

Royalty Waiver/Copyright Not Transferred

The U.S. District Court for the Southern District of New York ruled that a settlement deal in which artists agreed to 'irrevocably and forever waive any and all royalties and/or other payments, including so-called performance and mechanical license payments, heretofore and hereafter accruing [from exploitation of the artists master recordings]' didn't transfer the artists' copyrights in the songs. Big East Entertainment Inc. v. Zomba Enterprises Inc., 04 Civ. 10008 (RWS). The members of Boogie Down Productions (BDP) had signed a recording contract with Rock Candy Records, plaintiff Big East's purported predecessor-in-interest, in 1986. BDP sued the record label the following year, claiming the contract was unfair, and the parties entered into a settlement. BDP's Lawrence Parker then signed a music-publishing agreement with Zomba. In 2002, Zomba licensed a song from the BDP album 'Criminal Minded,' which BDP had recorded for Rock Candy, for inclusion in
the Jennifer Lopez track 'Jenny From the Block.' Big East then filed a copyright-infringement action over the composition. But the district court noted that a royalty agreement without additional language isn't a transfer of a copyright. The court also explained that use of the word 'retain' in another part of the BDP/Rock Candy settlement referred to 'only the limited rights that [Rock Candy] previously held, ie, the right to exploit and distribute the recordings on the 'Criminal Minded' album. The only language in the 1987 Settlement Agreement that grants 'full right, title, and interest' in any intellectual property rights is in Paragraph Five, which grants to the members of BDP the right to use the trade name BDP.' In any case, the court also found that Big East's suit was barred by the 3-year statute of limitations of the Copyright Act.

Copyright Renewal/'Posthumous Work'

A Manhattan federal district court decided in a complex case that the short-story 'Chitty Chitty Bang Bang' wasn't a posthumous work under the Copyright Act, even though the story's British author Ian Fleming died before the work was published. Legislator 1357 Ltd. v. Metro-Goldwyn-Mayer Inc. (MGM), 04 Civ. 3951(MGC). The late author's nieces sued claiming ownership of the 1993 renewal term in the story and infringement through the defendant's recent distribution of the film 'Chitty Chitty Bang Bang,' originally made under a rights assignment in the 1960s. The Copyright Act doesn't define 'posthumous work.' The movie studio argued that the story was one, whose renewal rights therefore vested in the book trust that Fleming set up to grant the TV and film rights that the studio subsequently obtained. But the district court stated: 'In addition to assigning the copyright and entering into contracts during his lifetime [for the story], Ian Fleming revised manuscripts for publication. ' The rights in the renewal term therefore vested in the trustees of the Will Trust as executors of Fleming's estate and not, as defendants contend, in the trustees of the Book Trust.' However, the court ruled, among other things, that MGM could pursue an equitable-estoppel defense due to the 'lengthy delay in filing this [2004] action, as well as defendants' good faith belief that plaintiffs viewed them as the owners of the film rights in the Work.'

Radio Broadcasting/Sponsored Airplay

The U.S. District Court for the Middle District of Tennessee declined to dismiss counterclaims raised by defendants in a suit a Nashville radio station filed seeking payment for sponsored airplay of music. WYCQ Inc. v. National Music Marketing Inc. (NMM), 3:05-0979. Promotion company NMM had agreed to buy time for its clients' music to be played on WYCQ and affiliated stations. WYCQ later filed suit claiming that NMM had failed to pay by a promised date the full amount owed for the 'spins.' The radio station's complaint alleged breach of contract, conversion and fraudulent misrepresentation. Air-time buys are allowed under federal anti-payola laws, which mandate that stations inform listeners of the airplay paid sponsorship. NMM alleged in its counterclaims to WYCQ's suit that some WYCQ practices violated the anti-payola statutes, 47 U.S.C. Secs. 317 and 508. WYCQ responded that NMM lacked standing to pursue the counterclaims because the federal statutes offered no private cause of action. The district court noted: '[E]ven if WYCQ had somehow violated anti-payola statutes in the performance of its contract with NMM, such violation likely would be so ancillary to the underlying contract as to have no impact on it.' But the court added that NMM's 'breach of contract and conversion claims do not stand on statutory violations alone. ' Instead, they appear to be garden-variety allegations that WYCQ (1) breached the parties' contract by improperly conducting contests sponsored by NMM; and (2) converted for its own use money that NMM had allotted for the contests. ' Thus, while WYCQ has properly called into question one of the bases for these claims, it cannot succeed in dismissing them altogether, as they rest on other grounds.'

Royalty Waiver/Copyright Not Transferred

The U.S. District Court for the Southern District of New York ruled that a settlement deal in which artists agreed to 'irrevocably and forever waive any and all royalties and/or other payments, including so-called performance and mechanical license payments, heretofore and hereafter accruing [from exploitation of the artists master recordings]' didn't transfer the artists' copyrights in the songs. Big East Entertainment Inc. v. Zomba Enterprises Inc., 04 Civ. 10008 (RWS). The members of Boogie Down Productions (BDP) had signed a recording contract with Rock Candy Records, plaintiff Big East's purported predecessor-in-interest, in 1986. BDP sued the record label the following year, claiming the contract was unfair, and the parties entered into a settlement. BDP's Lawrence Parker then signed a music-publishing agreement with Zomba. In 2002, Zomba licensed a song from the BDP album 'Criminal Minded,' which BDP had recorded for Rock Candy, for inclusion in
the Jennifer Lopez track 'Jenny From the Block.' Big East then filed a copyright-infringement action over the composition. But the district court noted that a royalty agreement without additional language isn't a transfer of a copyright. The court also explained that use of the word 'retain' in another part of the BDP/Rock Candy settlement referred to 'only the limited rights that [Rock Candy] previously held, ie, the right to exploit and distribute the recordings on the 'Criminal Minded' album. The only language in the 1987 Settlement Agreement that grants 'full right, title, and interest' in any intellectual property rights is in Paragraph Five, which grants to the members of BDP the right to use the trade name BDP.' In any case, the court also found that Big East's suit was barred by the 3-year statute of limitations of the Copyright Act.