Unsettled Issues Are Raised By Bid to Terminate Copyright Grants in Village People Songs

Slightly more than a year from now, a second path opens up under '203(a) through which authors and their successors may recapture rights under copyright grants made in 1978 and afterward. The year 2013 is the first during which terminations via the second path become effective, and the first in which termination of rights in sound recordings can become effective under either section of the act. (Although '203(a) became effective in 1978, an effective date of termination under that section can occur no sooner than the 35th anniversary of the grant; accordingly, grants made in 1978 are subject to effective dates of termination in 2013. Pre-1978 grants of rights in sound recordings under '304(c) will not be terminable until at least 2028, the 56th year after 1972, which is the year in which sound recordings first became protected under copyright in the United States.)

Although grants of rights in music composed before 1978 have been subject to termination for decades under '304, grants of rights in music composed after 1977 become susceptible to termination for the first time in 2013 under '203(a), which makes the year noteworthy for this reason, too. And as the Willis case demonstrates, termination of rights in musical compositions also raises issues.

It is not surprising that efforts to terminate rights in valuable compositions like “YMCA” and “In the Navy” might give rise to litigation. (The New York Times reported in 2011 that each of these songs earns $1 million or more annually.) The rules of termination are detailed and complex both in the Copyright Act and in the implementing regulations. (See, 37 C.F.R. '201.10.) In some respects, those rules are difficult to interpret and in other respects, difficult to apply even when their meaning is clear.

In the latter category, there are numerous examples that relate to terminations under both ”304 and 203: Failure of the notice of termination to identify sufficiently the grant that one wishes to terminate, or the copyrighted works to which it relates, can raise issues. So might failure to identify and notify the correct current rights holders, which is not always easy after decades of assignments, licenses and corporate mergers.

Termination of a grant signed by an author since deceased must be effected by the author's surviving statutory successors who collectively own more than one-half of that author's termination interest. A span of time may pass before a majority of successors agree to attempt a recovery of rights and, by that time, the statutory time period during which termination must be effected could have expired. Because works for hire are not subject to termination, distinguishing an employee for hire from one who is not can give rise to disputes. And because termination only affects U.S. rights, distinguishing domestic revenues from foreign revenues derived from an international grant can raise issues even in the damages phase.

In the proceedings in Willis, the issue of work-for-hire status has been raised. However, the primary focus has been placed not on the application of clear-but-complex rules, but rather on the meaning of a sentence in the statute itself. (In their complaint, the publishers allege that Willis was a “writer for hire,” thereby placing the songs beyond the reach of the termination statute. Willis responded that the grants he signed contained no work-for-hire language and were expressed instead in the language of “transfer and conveyance,” and further that the copyright registrations did not refer to work-for-hire status. The publishers did not oppose that part of Willis' motion to dismiss.)

In the music publishers' action for declaratory relief, they seek to establish that Willis' attempt to terminate his grants in 33 compositions is “void and of no force or effect” primarily on the ground that a single author cannot terminate a grantee's rights in a work of joint authors under '203(a). Willis responded with a motion to dismiss.

The dispute pits the wording of the statute against what the publishers assert to be its intent. The Village People recorded in the 1970s and 1980s, and according to lead singer Willis' submission on his motion, he wrote lyrics to many of the musical compositions recorded by the group including the “classic songs” “YMCA” and “In the Navy.” These two works (among others) were registered in the U.S. Copyright Office with Willis and two co-writers credited with joint authorship of words and music. In other instances, Willis was credited in the registration with co-authorship of the lyrics only.

From 1977 to 1979, Willis assigned his copyright interests in those 33 compositions to one of the plaintiff publishers, which then allegedly transferred rights to the other. Willis was the only signatory to the written assignments he signed. The other joint authors transferred their rights in separate instruments. In early 2011, Willis served notices of termination on the publishers under '203(a) with respect to his assignments of rights in those 33 compositions.

Joint Works

The publishers seek to defeat Willis' motion principally on the basis that he was one of several joint authors whose joint work was “a unitary whole.” Accordingly, they argue that a grant conveying rights in “joint works written by more than one person” cannot be terminated by a single joint author, i.e., “simply because [Willis] signed documents different from the ones signed by the other authors of the same joint works, [he] is neither the sole grantor nor only author of any of the [musical compositions] and hence, he is not a 'majority of authors.'”

Willis' response is rather simple. He relies on the fact that each of the grants he wishes to terminate names him alone as the grantor. Any co-authors involved in writing the compositions may have made their own songwriter agreements (as the publishers contend), but no one other than Willis executed the grants that Willis is attempting to terminate. Section 203(a)(1) of the Copyright Act says: “In the case of a grant executed by one author, termination of the grant may be effected by that author '” (emphasis added). There is no mention in this sentence of any other authors who may have co-created a joint work; the focus is on the one who signed the grant being terminated. A subsequent sentence applies to “a grant executed by two or more authors of a joint work” (emphasis added), which does not describe the grants that Willis signed. Only in that instance does the law require that “termination of the grant ' be effected by a majority of the authors who executed it '.”

Willis observed in his motion papers that “the operative words of the entire section '203 relating to the termination provisions are the 'grant' and not 'joint authors' or 'collective grants' or 'several grants' or similar terms that denote plural grants, no matter how much [the publishers] may try to justify their argument.” Willis argues that under '203(a), “it is the majority of the authors who executed the grant being terminated, rather than the majority of the authors who wrote the work, that is the requirement for a valid notice of termination” (emphasis added). Willis concludes that in the case of each grant being terminated, he was the only joint author who executed it and therefore the only one needed to terminate it.

'True Purpose'

Two of the most interesting issues raised by the motion concern the “true purpose” of the termination provisions as they relate to works of joint authorship and the challenge of identifying precisely what rights under copyright would revert to Willis if his notices of termination in a joint work are effective.

On the first point, the publishers invoked the primacy of substance over form, arguing that the “mere circumstance” that co-authors of 33 joint works “happened to execute separate granting documents” should not dictate the outcome. Rather, according to the publishers, “the clear purpose and policy” of the 1976 termination provisions was “to make termination only available to a majority decision where joint works are concerned” (emphasis added). Willis has responded that this argument would “turn the statute on its head” because the “true purposes” of the termination provisions were “to protect authors' rights.”

Citing legislative history, Willis has argued that “the purpose of enacting the termination provisions was to protect authors by providing an opportunity to re-market their works once the true value of such works had been established.” And further addressing “substance,” Willis contends that it would be a “strained interpretation” of the word “grant” to mean “various separate grants of each co-author entered into at different times with various different grantees” ' which would be “wholly inconsistent and unworkable with the related provisions of the Copyright Act and implementing Regulations.” They “clearly contemplate the termination of a specific grant,” Willis claims.

On the second point, the publishers say that if the effect of Willis' notice is to recover “his interest, i.e., whatever he granted in the first place,” then there existed a “substantial factual issue ' that could not be determined” on a motion to dismiss. The publishers have contended: “Whatever [Willis'] actual contribution to each song may [have] been, it was by law undivided and cannot be carved out. In order to be terminated unilaterally he must have with him a majority of his co-authors.”

This issue lies at the core of the dispute, but the precise question is not necessarily whether Willis' contribution to each song can be surgically removed. With respect to jointly written lyrics in particular, there is no practical way to tweeze out one writer's contribution and proceed with the remainder, either for Willis (and his recaptured contribution, if he succeeds) or for the publishers (with the balance of the composition). If Willis prevails, the music with lyrics would be unusable unless and until Willis and the publishers enter into a new deal or all of the co-authors' grants relating to a particular composition are successfully terminated.

To complement our recent article on the termination of rights under copyright in sound recordings (see, “Issues in Terminating Copyright Grants in Sound Recordings,” Entertainment Law & Finance, Dec. 2011, p.3, http://bit.ly/zfd5JA), we focus here on termination of rights under copyright in musical compositions ' and particularly on the pending lawsuit in California in which rights in some iconic songs made famous by the Village People are in dispute. Scorpio Music (Black Scorpio) S.A. v. Victor Willis, 3:11-CV- 01557 (S.D. Calif.). The songs include “YMCA” and “In the Navy,” which were co-authored by the group's lead singer Victor Willis. He maintains that the copyright termination statute should be interpreted literally, allowing him, as a co-author of a joint work that signed a separate grant, to terminate rights to his own contribution without having a majority of co-authors terminate all rights. Two music publishers maintain that this result would contravene the spirit of the law.

Statutory Termination Provisions

As noted in our last article, the 1976 Copyright Act gave authors and their successors a way to terminate pre-1978 grants under copyright in certain pre-1978 works through 17 U.S.C. '304(c). (Section 304(c) was enacted in 1976; '304(d), which provides a second termination window for certain works, became law in 1998.)

Slightly more than a year from now, a second path opens up under '203(a) through which authors and their successors may recapture rights under copyright grants made in 1978 and afterward. The year 2013 is the first during which terminations via the second path become effective, and the first in which termination of rights in sound recordings can become effective under either section of the act. (Although '203(a) became effective in 1978, an effective date of termination under that section can occur no sooner than the 35th anniversary of the grant; accordingly, grants made in 1978 are subject to effective dates of termination in 2013. Pre-1978 grants of rights in sound recordings under '304(c) will not be terminable until at least 2028, the 56th year after 1972, which is the year in which sound recordings first became protected under copyright in the United States.)

Although grants of rights in music composed before 1978 have been subject to termination for decades under '304, grants of rights in music composed after 1977 become susceptible to termination for the first time in 2013 under '203(a), which makes the year noteworthy for this reason, too. And as the Willis case demonstrates, termination of rights in musical compositions also raises issues.

It is not surprising that efforts to terminate rights in valuable compositions like “YMCA” and “In the Navy” might give rise to litigation. (The New York Times reported in 2011 that each of these songs earns $1 million or more annually.) The rules of termination are detailed and complex both in the Copyright Act and in the implementing regulations. (See, 37 C.F.R. '201.10.) In some respects, those rules are difficult to interpret and in other respects, difficult to apply even when their meaning is clear.

In the latter category, there are numerous examples that relate to terminations under both ”304 and 203: Failure of the notice of termination to identify sufficiently the grant that one wishes to terminate, or the copyrighted works to which it relates, can raise issues. So might failure to identify and notify the correct current rights holders, which is not always easy after decades of assignments, licenses and corporate mergers.

Termination of a grant signed by an author since deceased must be effected by the author's surviving statutory successors who collectively own more than one-half of that author's termination interest. A span of time may pass before a majority of successors agree to attempt a recovery of rights and, by that time, the statutory time period during which termination must be effected could have expired. Because works for hire are not subject to termination, distinguishing an employee for hire from one who is not can give rise to disputes. And because termination only affects U.S. rights, distinguishing domestic revenues from foreign revenues derived from an international grant can raise issues even in the damages phase.

In the proceedings in Willis, the issue of work-for-hire status has been raised. However, the primary focus has been placed not on the application of clear-but-complex rules, but rather on the meaning of a sentence in the statute itself. (In their complaint, the publishers allege that Willis was a “writer for hire,” thereby placing the songs beyond the reach of the termination statute. Willis responded that the grants he signed contained no work-for-hire language and were expressed instead in the language of “transfer and conveyance,” and further that the copyright registrations did not refer to work-for-hire status. The publishers did not oppose that part of Willis' motion to dismiss.)

In the music publishers' action for declaratory relief, they seek to establish that Willis' attempt to terminate his grants in 33 compositions is “void and of no force or effect” primarily on the ground that a single author cannot terminate a grantee's rights in a work of joint authors under '203(a). Willis responded with a motion to dismiss.

The dispute pits the wording of the statute against what the publishers assert to be its intent. The Village People recorded in the 1970s and 1980s, and according to lead singer Willis' submission on his motion, he wrote lyrics to many of the musical compositions recorded by the group including the “classic songs” “YMCA” and “In the Navy.” These two works (among others) were registered in the U.S. Copyright Office with Willis and two co-writers credited with joint authorship of words and music. In other instances, Willis was credited in the registration with co-authorship of the lyrics only.

From 1977 to 1979, Willis assigned his copyright interests in those 33 compositions to one of the plaintiff publishers, which then allegedly transferred rights to the other. Willis was the only signatory to the written assignments he signed. The other joint authors transferred their rights in separate instruments. In early 2011, Willis served notices of termination on the publishers under '203(a) with respect to his assignments of rights in those 33 compositions.

Joint Works

The publishers seek to defeat Willis' motion principally on the basis that he was one of several joint authors whose joint work was “a unitary whole.” Accordingly, they argue that a grant conveying rights in “joint works written by more than one person” cannot be terminated by a single joint author, i.e., “simply because [Willis] signed documents different from the ones signed by the other authors of the same joint works, [he] is neither the sole grantor nor only author of any of the [musical compositions] and hence, he is not a 'majority of authors.'”

Willis' response is rather simple. He relies on the fact that each of the grants he wishes to terminate names him alone as the grantor. Any co-authors involved in writing the compositions may have made their own songwriter agreements (as the publishers contend), but no one other than Willis executed the grants that Willis is attempting to terminate. Section 203(a)(1) of the Copyright Act says: “In the case of a grant executed by one author, termination of the grant may be effected by that author '” (emphasis added). There is no mention in this sentence of any other authors who may have co-created a joint work; the focus is on the one who signed the grant being terminated. A subsequent sentence applies to “a grant executed by two or more authors of a joint work” (emphasis added), which does not describe the grants that Willis signed. Only in that instance does the law require that “termination of the grant ' be effected by a majority of the authors who executed it '.”

Willis observed in his motion papers that “the operative words of the entire section '203 relating to the termination provisions are the 'grant' and not 'joint authors' or 'collective grants' or 'several grants' or similar terms that denote plural grants, no matter how much [the publishers] may try to justify their argument.” Willis argues that under '203(a), “it is the majority of the authors who executed the grant being terminated, rather than the majority of the authors who wrote the work, that is the requirement for a valid notice of termination” (emphasis added). Willis concludes that in the case of each grant being terminated, he was the only joint author who executed it and therefore the only one needed to terminate it.

'True Purpose'

Two of the most interesting issues raised by the motion concern the “true purpose” of the termination provisions as they relate to works of joint authorship and the challenge of identifying precisely what rights under copyright would revert to Willis if his notices of termination in a joint work are effective.

On the first point, the publishers invoked the primacy of substance over form, arguing that the “mere circumstance” that co-authors of 33 joint works “happened to execute separate granting documents” should not dictate the outcome. Rather, according to the publishers, “the clear purpose and policy” of the 1976 termination provisions was “to make termination only available to a majority decision where joint works are concerned” (emphasis added). Willis has responded that this argument would “turn the statute on its head” because the “true purposes” of the termination provisions were “to protect authors' rights.”

Citing legislative history, Willis has argued that “the purpose of enacting the termination provisions was to protect authors by providing an opportunity to re-market their works once the true value of such works had been established.” And further addressing “substance,” Willis contends that it would be a “strained interpretation” of the word “grant” to mean “various separate grants of each co-author entered into at different times with various different grantees” ' which would be “wholly inconsistent and unworkable with the related provisions of the Copyright Act and implementing Regulations.” They “clearly contemplate the termination of a specific grant,” Willis claims.

On the second point, the publishers say that if the effect of Willis' notice is to recover “his interest, i.e., whatever he granted in the first place,” then there existed a “substantial factual issue ' that could not be determined” on a motion to dismiss. The publishers have contended: “Whatever [Willis'] actual contribution to each song may [have] been, it was by law undivided and cannot be carved out. In order to be terminated unilaterally he must have with him a majority of his co-authors.”

This issue lies at the core of the dispute, but the precise question is not necessarily whether Willis' contribution to each song can be surgically removed. With respect to jointly written lyrics in particular, there is no practical way to tweeze out one writer's contribution and proceed with the remainder, either for Willis (and his recaptured contribution, if he succeeds) or for the publishers (with the balance of the composition). If Willis prevails, the music with lyrics would be unusable unless and until Willis and the publishers enter into a new deal or all of the co-authors' grants relating to a particular composition are successfully terminated.