Court Dismisses Challenge to Termination by Ray Charles’s Children

Angry JudgeA California district court has dismissed a case filed by the Ray Charles Foundation (which received all of Ray Charles’s assets, including his copyrights, pursuant to his will) to challenge copyright grant termination notices filed by Mr. Charles’s children.

The typical termination validity dispute is fought out between the author (or her surviving spouse or children) and the licensee / assignee of the grant being terminated.  In this case, however, the fight was between the statutory heirs for the purpose of Section 203 or 304 termination rights (the children of Ray Charles) and the heirs who claimed the rights through the songwriter’s will (the Foundation).  Under the Copyright Act, the author’s right of termination descends to particular heirs, irrespective of any provision to the contrary in the author’s will.  Hence the Foundation’s desire to invalidate the termination notices.

Another unusual wrinkle in the case was that each of the children had signed agreements during the life of Ray Charles, accepting $500,000 in trust in exchange for waiving any further inheritance or claims against the estate.  The Foundation sued upon two state law contract claims, based upon these agreements, and also upon a federal claim for a declaratory judgment that the termination notices were invalid on various grounds, including the agreements waiving any inheritance, timeliness of the notices, and the alleged work for hire status of the songs.

With respect to the state law claims, the district court struck both claims pursuant to California’s anti-SLAPP statute and awarded defendants their attorney’s fees.  First, the court held that a dispute concerning the validity of a copyright transfer termination notice fell within the scope of the anti-SLAPP statute on the ground that the required filing of the termination notice with the Copyright Office constituted an “official proceeding” as opposed to a merely “ministerial act.”  Next, the court found that the Foundation could not establish a reasonable probability of succeeding on the merits of its state law claims because (1) the termination notices could not be considered claims against the Ray Charles estate, which had completed probate many years before the termination notices were served; (2) if the songs were works for hire, as alleged by the Foundation throughout the Complaint, then Ray Charles never owned the copyrights or any termination right and thus would not have been part of the estate; and (3) if the songs were not works made for hire, the Copyright Act expressly provides that the children had the termination right “notwithstanding any agreement to the contrary,” which would render the agreements unenforceable with respect to any waiver of the termination right.

Turning to the declaratory judgment claim, the court dismissed that claim on the ground of standing, holding that (1) if the songs were works for hire then the Foundation could not be a beneficial owner for the purpose of establishing standing; and (2) even if the songs were not works for hire, a beneficial ownership interest in the copyright was insufficient –only the grantee of the transfer subject to termination has standing to sue for a declaratory judgment of invalidity.

This is just a broad summary of a very interesting and well written decision, which I attach below and recommend to anyone interested in termination disputes and related standing issues.

Macho Man Songwriter Wins Termination Case

Village People songwriter, lead singer and ersatz police officer, Victor Willis, has prevailed in a lawsuit challenging his termination of assignment (and resulting recapture) of copyright to his many hit songs.  To be honest, the decision is very straightforward and there really were not any difficult issues presented, particularly because the music publisher withdrew its claim that the songs were works made for hire (which would have rendered any attempt to terminate ineffective).  The only argument advanced by the publisher was that Mr. Willis could not terminate his assignment because he was only one of several joint authors of the assigned songs.

This argument was frivolous, however, because [Read more…]

Termination of Sound Recording Copyright Transfers – CLE Program

I will be speaking at an upcoming CLE program on one of my favorite topics: recording artists’ recapture of their copyrights from the record labels.  As 2013 (the first year that sound recording copyright transfers will have ever been subject to termination) approaches, this issue is getting on the radar of more and more folks.  I have been dealing with it for over a decade, having briefed the sound recording work for hire issue in the original litigation.  The program will take place on Tuesday, January 24 in New York City.

My panel will be part of a much larger intellectual property law CLE program sponsored by the New York State Bar Association Intellectual Property Law Section.  I highly encourage anyone interested in any facet of intellectual property law to attend.  I am not aware of any other program where you can get 8 credit hours of CLE (including 1 hour of ethics credit) for only $125.  Here is a link to the registration materials for those interested, and here is a copy of the full-day program:

Recording Artists Set To Recapture Rights To Classic Albums

The upcoming war between recording artists and their slavemasters, er, I mean record labels, concerning termination of copyright transfers and the related work made for hire issue is a topic near and dear to my heart.  [Read more…]

Doctor Doom Prevails: SDNY holds Jack Kirby’s Iconic Contributions to Marvel Comics Characters Were Works For Hire

  Another decision has come out of the SDNY, Marvel Wolrdwide, Inc. v. Kirby, holding that work commissioned from an independent contractor was work made for hire under the 1909 Act.

In this case, comic book industry Galactus, Marvel, filed a declaratory judgment action seeking a ruling that the Section 304(c) termination notices served by the heirs of legendary comic book artist and co-plotter Jack Kirby were invalid.  The work for hire issue is crucial in termination cases because if work is made for hire, the employer or commissioning party is treated fictionally as the author in the first instance, and the individual who actually created the work can never terminate any transfer to recapture copyright ownership in his or her work.

Kirby, who jointly created many of Marvel’s greatest characters with Stan Lee (including the Fantastic Four as shown in the first issue cover by Kirby depicted above), was not an employee of Marvel at the relevant time period, but rather was an independent contractor, working for 12-14 hours a day and paid on a per-page basis.  There was no written agreement.  Together with Marvel editor Stan Lee, Kirby created several of Marvel’s most famous (and profitable) characters, co-writing the stories and drawing the artwork.

As noted above, the issue in this case was whether Kirby’s contributions to the Marvel canon were works made for hire under the 1909 Act, and the district court granted summary judgment for Marvel, holding that they were. [Read more…]