Bit Parts

Copyright Act Doesn't Bar Separate Attorney-Fee-Shifting Provision

In a case of first impression, the U.S. Court of Appeals for the Ninth Circuit decided that the Copyright Act didn't bar enforcement of a fee-shifting provision in an agreement between a visual artist and a publisher. Ryan v. Editions Limited West Inc. (ELW), 12-17810. Artist Victoria Ryan signed an agreement for ELW only to publish posters of her work. The agreement stated: 'In the event that litigation is instituted with regard to this Agreement, the prevailing party shall be entitled to its costs of the suit, including reasonable attorney's fees.' Ryan prevailed in the Northern District of California on a claim of contributory infringement against Editions West for providing others with a Ryan work for derivative uses. But the district court denied Ryan attorney fees under the Copyright Act on the ground that she hadn't timely registered her work with the Copyright Office. The Ninth Circuit noted, however: 'This is not a case involving a copyright holder's efforts to enforce its rights against the world.' The appeals court added: 'Because California law permitting contractual fee-shifting provisions does not fall within the scope of the federal copyright preemption provision in 17 U.S.C.] '301(a) or conflict with the purpose of the Copyright Act, we determine that the Copyright Act does not preempt enforcement of the Agreement's fee-shifting provision.”But the appeals court remanded the case for the district court to explain why it had awarded Ryan only a small portion of the attorney fees she requested.

No Federal Jurisdiction over Songs Suit

The U.S. District Court for the Central District of California decided it lacked subject matter jurisdiction over a royalties suit by musician Donald Hepburn, a former member of the band Pleasure, who seeks declaratory relief and an accounting over use of his songs. Hepburn v. Concord Music Group LLC, 2:14-cv-09237. District Judge Christina A. Snyder noted: '[T]he complaint does not seek a determination based on copyright law of a 'disputed allegation of co-authorship.' Rather, Hepburn seeks declarations of (1) 'the respective interests of each Defendant in the relevant Pleasure copyrights,' and (2) 'which Defendants the Plaintiff may pursue' in a yet-to-be-filed 'copyright infringement action' involving those copyrights. Determining what, if any, interests Concord has in the Pleasure copyrights will require the interpretation of contracts'and other chain of title documentation, not the Copyright Act.'

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He was the 2014 recipient of the State Bar of Texas Entertainment & Sports Law Section's 'Texas Star Award.' Stan's new book, Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England), will be published in September 2015. He can be reached at [email protected] or via www.stansoocher.com.

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Copyright Act Doesn't Bar Separate Attorney-Fee-Shifting Provision

In a case of first impression, the U.S. Court of Appeals for the Ninth Circuit decided that the Copyright Act didn't bar enforcement of a fee-shifting provision in an agreement between a visual artist and a publisher. Ryan v. Editions Limited West Inc. (ELW), 12-17810. Artist Victoria Ryan signed an agreement for ELW only to publish posters of her work. The agreement stated: 'In the event that litigation is instituted with regard to this Agreement, the prevailing party shall be entitled to its costs of the suit, including reasonable attorney's fees.' Ryan prevailed in the Northern District of California on a claim of contributory infringement against Editions West for providing others with a Ryan work for derivative uses. But the district court denied Ryan attorney fees under the Copyright Act on the ground that she hadn't timely registered her work with the Copyright Office. The Ninth Circuit noted, however: 'This is not a case involving a copyright holder's efforts to enforce its rights against the world.' The appeals court added: 'Because California law permitting contractual fee-shifting provisions does not fall within the scope of the federal copyright preemption provision in 17 U.S.C.] '301(a) or conflict with the purpose of the Copyright Act, we determine that the Copyright Act does not preempt enforcement of the Agreement's fee-shifting provision.”But the appeals court remanded the case for the district court to explain why it had awarded Ryan only a small portion of the attorney fees she requested.

No Federal Jurisdiction over Songs Suit

The U.S. District Court for the Central District of California decided it lacked subject matter jurisdiction over a royalties suit by musician Donald Hepburn, a former member of the band Pleasure, who seeks declaratory relief and an accounting over use of his songs. Hepburn v. Concord Music Group LLC, 2:14-cv-09237. District Judge Christina A. Snyder noted: '[T]he complaint does not seek a determination based on copyright law of a 'disputed allegation of co-authorship.' Rather, Hepburn seeks declarations of (1) 'the respective interests of each Defendant in the relevant Pleasure copyrights,' and (2) 'which Defendants the Plaintiff may pursue' in a yet-to-be-filed 'copyright infringement action' involving those copyrights. Determining what, if any, interests Concord has in the Pleasure copyrights will require the interpretation of contracts'and other chain of title documentation, not the Copyright Act.'

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Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He was the 2014 recipient of the State Bar of Texas Entertainment & Sports Law Section's 'Texas Star Award.' Stan's new book, Baby You're a Rich Man: Suing the Beatles for Fun & Profit (ForeEdge/University Press of New England), will be published in September 2015. He can be reached at [email protected] or via www.stansoocher.com.

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