Introduction
In Class 15, we learned about the reproduction right, or a copyright owner's exclusive right to make copies of a copyrighted work. And in Class 16, we learned about the adaptation right, or a copyright owner's exclusive right to make derivative works based on a copyrighted work.
However, there are several statutory exceptions to the reproduction and adaptation rights. In this class, we will learn about those exceptions.
Reproduction by Libraries & Archives
Section 108 of the Copyright Act includes an exception to the reproduction and adaptation rights that allows libraries and archives to reproduce and distribute copies of certain categories of works, under certain circumstances. It provides:
(a) Except as otherwise provided in this title and notwithstanding the provisions of section 106, it is not an infringement of copyright for a library or archives, or any of its employees acting within the scope of their employment, to reproduce no more than one copy or phonorecord of a work, except as provided in subsections (b) and (c), or to distribute such copy or phonorecord, under the conditions specified by this section, if—17 U.S.C. § 108.
(1) the reproduction or distribution is made without any purpose of direct or indirect commercial advantage;
(2) the collections of the library or archives are
(i) open to the public, or
(ii) available not only to researchers affiliated with the library or archives or with the institution of which it is a part, but also to other persons doing research in a specialized field; and
(3) the reproduction or distribution of the work includes a notice of copyright that appears on the copy or phonorecord that is reproduced under the provisions of this section, or includes a legend stating that the work may be protected by copyright if no such notice can be found on the copy or phonorecord that is reproduced under the provisions of this section.
Essentially, Section 108 authorizes a public library or archive to create a copy of a copyrighted work for a non-commercial purpose. In other words, it allows libraries and archives to make copies for patrons. Congress enacted Section 108 in response to Williams v. Wilkins Co. v. United States, 487 F.2d 1345(Ct. Cl. 1973), which held that photocopying scientific articles was a protected fair use.
Section 108 also allows libraries and archives to make three copies of a work for the purpose of preservation:
(b) The rights of reproduction and distribution under this section apply to three copies or phonorecords of an unpublished work duplicated solely for purposes of preservation and security or for deposit for research use in another library or archives of the type described by clause (2) of subsection (a), if—17 U.S.C. § 108.
(1) the copy or phonorecord reproduced is currently in the collections of the library or archives; and
(2) any such copy or phonorecord that is reproduced in digital format is not otherwise distributed in that format and is not made available to the public in that format outside the premises of the library or archives.
(c) The right of reproduction under this section applies to three copies or phonorecords of a published work duplicated solely for the purpose of replacement of a copy or phonorecord that is damaged, deteriorating, lost, or stolen, or if the existing format in which the work is stored has become obsolete, if—
(1) the library or archives has, after a reasonable effort, determined that an unused replacement cannot be obtained at a fair price; and
(2) any such copy or phonorecord that is reproduced in digital format is not made available to the public in that format outside the premises of the library or archives in lawful possession of such copy.
Notably, the Section 108 exception to the reproduction right is limited to certain categories of works:
(i) The rights of reproduction and distribution under this section do not apply to a musical work, a pictorial, graphic or sculptural work, or a motion picture or other audiovisual work other than an audiovisual work dealing with news . . .17 U.S.C. § 108.
In other words, under Section 108, libraries and archives can only copy literary works, dramatic works, pantomimes and choreographic works, sound recordings, architectural works, and audiovisual works dealing with news.
Questions:
- Should libraries and archives be allowed to create copies of copyrighted works for patrons?
- Does the Section 108 exception adequately account for the current needs of libraries and archives? For example, does it authorize libraries and archives to acquire copies of works in digital formats and provide public access to those copies.
- In 2004, the Copyright Office and the Office of Strategic Planning Initiatives formed a group of experts to consider whether Congress should revise Section 108. The Section 8 Study Group Report was issued in 2007, and it available here. Among other things, the Study Group recommended that Congress extend Section 108 to cover museums and amend it in order to allow interlibrary loans of digital works. Do you agree with those recommendations?
Ephemeral Recordings
Section 112 of the Copyright Act creates an exception to the reproduction right that allows certain broadcasters to create "ephemeral recordings" of a work, if they own a right to perform or display the work, but do not own a right to reproduce the work. An ephemeral recording is a copy or phonorecord of a work made for the purpose of transmission. The Copyright Act explains:
To “transmit” a performance or display is to communicate it by any device or process whereby images or sounds are received beyond the place from which they are sent.17 U.S.C § 101.
Under Section 112(a), broadcasters may make one copy of a work they are authorized to broadcast, if the copy is used only for broadcasting. It provides:
[I]t is not an infringement of copyright for a transmitting organization entitled to transmit to the public a performance or display of a work . . . to make no more than one copy or phonorecord of a particular transmission program embodying the performance or display, if—17 U.S.C. § 112(a)(1).
(A) the copy or phonorecord is retained and used solely by the transmitting organization that made it, and no further copies or phonorecords are reproduced from it; and
(B) the copy or phonorecord is used solely for the transmitting organization’s own transmissions within its local service area, or for purposes of archival preservation or security; and
(C) unless preserved exclusively for archival purposes, the copy or phonorecord is destroyed within six months from the date the transmission program was first transmitted to the public.
Under Section 112(b), governmental bodies and nonprofit organizations may make thirty copies or phonorecords of works they are authorized to perform or display. It provides:
[I]t is not an infringement of copyright for a governmental body or other nonprofit organization entitled to transmit a performance or display of a work . . . to make no more than thirty copies or phonorecords of a particular transmission program embodying the performance or display, if—17 U.S.C. § 112(b).
(1) no further copies or phonorecords are reproduced from the copies or phonorecords made under this clause; and
(2) except for one copy or phonorecord that may be preserved exclusively for archival purposes, the copies or phonorecords are destroyed within seven years from the date the transmission program was first transmitted to the public.
Under Section 112(c), governmental bodies and nonprofit organizations may make one copy or phonorecord of a nondramatic musical religious work they are authorized to perform or display for broadcast, if they do not charge broadcasters for the copy or phonorecord. It provides
[I]t is not an infringement of copyright for a governmental body or other nonprofit organization to make for distribution no more than one copy or phonorecord, for each transmitting organization specified in clause (2) of this subsection, of a particular transmission program embodying a performance of a nondramatic musical work of a religious nature, or of a sound recording of such a musical work, if—17 U.S.C. § 112(c).
(1) there is no direct or indirect charge for making or distributing any such copies or phonorecords; and
(2) none of such copies or phonorecords is used for any performance other than a single transmission to the public by a transmitting organization entitled to transmit to the public a performance of the work under a license or transfer of the copyright; and
(3) except for one copy or phonorecord that may be preserved exclusively for archival purposes, the copies or phonorecords are all destroyed within one year from the date the transmission program was first transmitted to the public.
Under Section 112(d), governmental bodies and nonprofit organizations may make ten copies or phonorecords for broadcast to handicapped audiences. It provides:
[I]t is not an infringement of copyright for a governmental body or other nonprofit organization entitled to transmit a performance of a work under section 110 (8) to make no more than ten copies or phonorecords embodying the performance, or to permit the use of any such copy or phonorecord by any governmental body or nonprofit organization entitled to transmit a performance of a work under section 110 (8), if—17 U.S.C. § 112(d).
(1) any such copy or phonorecord is retained and used solely by the organization that made it, or by a governmental body or nonprofit organization entitled to transmit a performance of a work under section 110 (8), and no further copies or phonorecords are reproduced from it; and
(2) any such copy or phonorecord is used solely for transmissions authorized under section 110 (8), or for purposes of archival preservation or security; and
(3) the governmental body or nonprofit organization permitting any use of any such copy or phonorecord by any governmental body or nonprofit organization under this subsection does not make any charge for such use.
Under Section 112(e), certain broadcasters may make phonorecords of sound recordings they are authorized to transmit in certain ways. Essentially, companies that stream sound recordings to businesses may make phonorecords of that sound recording if it is necessary in order to use their equipment. For example, Muzak LLC might make a phonorecord of a mood music melody it is authorized to stream for each of its servers.
Questions:
- How "ephemeral" are ephemeral recordings?
- Why did Congress create the ephemeral recordings exception?
Reproduction of Pictorial, Graphic & Sculptural Works in Useful Articles
Section 113 of the Copyright Act creates an exception to the reproduction right in pictorial, graphic, and sculptural works that represent useful objects.
First, it codifies Mazer v. Stein, 347 U.S. 201 (1954), stating that the copyright in an original pictorial, graphic, or sculptural work is not affected by its embodiment in a useful article:
Subject to the provisions of subsections (b) and (c) of this section, the exclusive right to reproduce a copyrighted pictorial, graphic, or sculptural work in copies under section 106 includes the right to reproduce the work in or on any kind of article, whether useful or otherwise.17 U.S.C § 113(a).
In other words, the original elements of a useful article are protected by copyright.
Second, it provides that the author of an original work that represents a useful article does not own an exclusive right to manufacture the useful article:
This title does not afford, to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to the making, distribution, or display of the useful article so portrayed than those afforded to such works under the law, whether title 17 or the common law or statutes of a State, in effect on December 31, 1977, as held applicable and construed by a court in an action brought under this title.17 U.S.C § 113(b).
In other words, the author of an original work representing a lamp, a knife, or a computer, does not obtain an exclusive right to make lamps, knives, or computers. Only the original elements of the work are protected by copyright.
And third, it provides that the copyright owner of an original pictorial, graphic, or sculptural work that is an element of a useful work cannot prevent the representation of the useful article in advertisements, commentaries, or news reports:
(c) In the case of a work lawfully reproduced in useful articles that have been offered for sale or other distribution to the public, copyright does not include any right to prevent the making, distribution, or display of pictures or photographs of such articles in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports.17 U.S.C § 113(c).
Questions:
- Why did Congress limit the reproduction rights of authors who create works representing useful articles?
- Why did Congress limit the reproduction rights of authors whose works are embodied in useful articles? What about reproduction of the original work in an artistic work? What about a description of the original work in a fictional literary work?
Sound Recordings
Section 114 of the Copyright Act creates exceptions to the reproduction and adaptation rights in sound recordings.
Sound recordings receive less copyright protection than other categories of original works. To begin with, the author of a sound recording is not granted the performance or display right. See 17 U.S.C. § 106 and 17 U.S.C. § 114(a) ("The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance under section 106 (4)").
In addition, the reproduction and adaptation rights in a sound recording are infringed only by mechanical reproduction of an original element of the recording:
The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. The exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 is limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording.17 U.S.C. § 114(b).
In other words, mechanically reproducing an original element of a sound recording may infringe the reproduction or adaptation rights of the copyright owner, but recreating an original element of a sound recording in a new performance cannot, even if the recreation is identical to the original.
Questions:
- Why did Congress decide not to grant the performance and display rights to the authors of original sound recordings?
- How does the copyright protection of sound recordings compare to the copyright protection of photographs?
- In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1989), Bette Midler filed a right of publicity action against Ford for hiring a singer to perform her song "Do You Wanna Dance" for a commercial, while impersonating Midler's voice and style, and received $400,000 damages. In Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), Tom Waits filed a right of publicity action against Frito-Lay for hiring a singer to impersonate his voice and style, and won $2,500,000 damages. Are these cases consistent with Section 114? Should these right of publicity actions be preempted by the Copyright Act?
Bette Midler, Do You Wanna Dance (1972)
Tom Waits, Step Right Up (1976)
Under Section 114(b) of the Copyright Act, the reproduction right of the copyright owner of a sound recording is limited to "the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording," and the adaption right is limited to "the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality." 17 U.S.C. § 114(b).
But what is the extent of those rights? Do they enable copyright owners to prohibit the mechanical reproduction of any element of a sound recording without permission? Or do they only enable copyright owners to prohibit mechanical reproduction of original elements of the sound recording?
Many recording artists use mechanically reproduced elements of preexisting sound recordings to create new recordings. This practice dates back to the introduction of consumer tape recorders, which enabled artists to record existing sound recordings and stitch them together. In the 1970's and 80's, rap and hip-hop artists adopted the practice, which became known as "sampling." Sometimes, artists who sample existing works form a licensing agreement with the original artist. But sometimes they do not. When does sampling infringe on the adaptation right of the copyright owner of the original sound recording?
Buchanan and Goodman, The Flying Saucer (1956)
William S. Burroughs, Word Falling - Photo Falling (early 1960's)
Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792 (6th Cir. 2005)
RALPH B. GUY, JR., Circuit Judge.
Plaintiffs, Bridgeport Music, Inc., Westbound Records, Inc., Southfield Music, Inc., and Nine Records, Inc., appeal from several of the district court’s findings with respect to the copyright infringement claims asserted against No Limit Films. This action arises out of the use of a sample from the composition and sound recording “Get Off Your Ass and Jam” (“Get Off”) in the rap song “100 Miles and Runnin’” (“100 Miles”), which was included in the sound track of the movie I Got the Hook Up (Hook Up). Specifically, Westbound appeals from the district court’s decision to grant summary judgment to defendant on the grounds that the alleged infringement was de minimis and therefore not actionable.
Bridgeport, while not appealing from the summary judgment order, challenges instead the denial of its motion to amend the complaint to assert new claims of infringement based on a different song included in the sound track of Hook Up. Finally, Bridgeport, Southfield, and Nine Records appeal from the decision to award attorney fees and costs totaling $41,813.30 to No Limit Films under 17 U.S.C. § 505. For the reasons that follow, we reverse the district court’s grant of summary judgment to No Limit on Westbound’s claim of infringement of its sound recording copyright, but affirm the decision of the district court as to the award of attorney fees and the denial of Bridgeport’s motion to amend.
I.
The claims at issue in this appeal were originally asserted in an action filed on May 4, 2001, by the related entities Bridgeport Music, Southfield Music, Westbound Records, and Nine Records, alleging nearly 500 counts against approximately 800 defendants for copyright infringement and various state law claims relating to the use of samples without permission in new rap recordings. In August 2001, the district court severed that original complaint into 476 separate actions, this being one of them, based on the allegedly infringing work and ordered that amended complaints be filed.
The claims in this case were brought by all four plaintiffs: Bridgeport and Southfield, which are in the business of music publishing and exploiting musical composition copyrights, and Westbound Records and Nine Records, which are in the business of recording and distributing sound recordings. It was conceded at the time of summary judgment, however, that neither Southfield Music nor Nine Records had any ownership interest in the copyrights at issue in this case. As a result, the district court ordered that they be jointly and severally liable for 10% of the attorney fees and costs awarded to No Limit Films.
Bridgeport and Westbound claim to own the musical composition and sound recording copyrights in “Get Off Your Ass and Jam” by George Clinton, Jr. and the Funkadelics. We assume, as did the district court, that plaintiffs would be able to establish ownership in the copyrights they claim. There seems to be no dispute either that “Get Off” was digitally sampled or that the recording “100 Miles” was included on the sound track of I Got the Hook Up. Defendant No Limit Films, in conjunction with Priority Records, released the movie to theaters on May 27, 1998. The movie was apparently also released on VHS, DVD, and cable television. Fatal to Bridgeport’s claims of infringement was the Release and Agreement it entered into with two of the original owners of the composition “100 Miles,” Ruthless Attack Muzick (RAM) and Dollarz N Sense Music (DNSM), in December 1998, granting a sample use license to RAM, DNSM, and their licensees. Finding that No Limit Films had previously been granted an oral synchronization license to use the composition “100 Miles” in the sound track of Hook Up, the district court concluded Bridgeport’s claims against No Limit Films were barred by the unambiguous terms of the Release and Agreement. Bridgeport Music, Inc. v. Dimension Films LLC, 230 F. Supp.2d 830, 833-38 (M.D. Tenn. 2002). Although Bridgeport does not appeal from this determination, it is relevant to the district court’s later decision to award attorney fees to No Limit Films.
Westbound’s claims are for infringement of the sound recording “Get Off.”(3) Because defendant does not deny it, we assume that the sound track of Hook Up used portions of “100 Miles” that included the allegedly infringing sample from “Get Off.” The recording “Get Off” opens with a three-note combination solo guitar “riff” that lasts four seconds. According to one of plaintiffs’ experts, Randy Kling, the recording “100 Miles” contains a sample from that guitar solo. Specifically, a two-second sample from the guitar solo was copied, the pitch was lowered, and the copied piece was “looped” and extended to 16 beats. Kling states that this sample appears in the sound recording “100 Miles” in five places; specifically, at 0:49, 1:52, 2:29, 3:20 and 3:46. By the district court’s estimation, each looped segment lasted approximately 7 seconds. As for the segment copied from “Get Off,” the district court described it as follows:
The portion of the song at issue here is an arpeggiated chord – that is, three notes that, if struck together, comprise a chord but instead are played one at a time in very quick succession – that is repeated several times at the opening of “Get Off.” The arpeggiated chord is played on an unaccompanied electric guitar. The rapidity of the notes and the way they are played produce a high-pitched, whirling sound that captures the listener’s attention and creates anticipation of what is to follow.
Bridgeport, 230 F. Supp.2d at 839. No Limit Films moved for summary judgment, arguing (1) that the sample was not protected by copyright law because it was not “original”; and (2) that the sample was legally insubstantial and therefore does not amount to actionable copying under copyright law.
Mindful of the limited number of notes and chords available to composers, the district court explained that the question turned not on the originality of the chord but, rather, on “the use of and the aural effect produced by the way the notes and the chord are played, especially here where copying of the sound recording is at issue.” Id. (citations omitted). The district court found, after carefully listening to the recording of “Get Off,” “that a jury could reasonably conclude that the way the arpeggiated chord is used and memorialized in the ‘Get Off’ sound recording is original and creative and therefore entitled to copyright protection.” Id. (citing Newton v. Diamond, 204 F. Supp.2d 1244, 1249-59 (C.D. Cal. 2002)) (later affirmed on other grounds at 349 F.3d 591 (9th Cir. 2003)). No Limit Films does not appeal from this determination.
Turning then to the question of de minimis copying in the context of digital sampling, the district court concluded that, whether the sampling is examined under a qualitative/quantitative de minimis analysis or under the so-called “fragmented literal similarity” test, the sampling in this case did not “rise to the level of a legally cognizable appropriation.” 230 F. Supp.2d at 841. Westbound argues that the district court erred both in its articulation of the applicable standards and its determination that there was no genuine issue of fact precluding summary judgment on this issue.
On October 11, 2002, the district court granted summary judgment to No Limit Films on the claims of Bridgeport and Westbound; dismissed with prejudice the claims of Southfield and Nine Records; denied as moot the motion of Bridgeport and Westbound for partial summary judgment on the issue of copyright ownership; and entered final judgment accordingly. Bridgeport and Westbound appealed. The facts relevant to the earlier denial of Bridgeport’s motion to amend the complaint will be discussed below. No Limit Films filed a post-judgment motion for attorney fees and costs, which the district court granted for the reasons set forth in its memorandum opinion and order of April 24, 2003. Bridgeport, Southfield Music, and Nine Records appealed from that award.
II.
The district court’s decision granting summary judgment is reviewed de novo. Smith v. Ameritech, 129 F.3d 857, 863 (6th Cir. 1997). In deciding a motion for summary judgment, the court must view the evidence and reasonable inferences in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). Summary judgment is appropriate when there are no genuine issues of material fact in dispute and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).
In granting summary judgment to defendant, the district court looked to general de minimis principles and emphasized the paucity of case law on the issue of whether digital sampling amounts to copyright infringement. Drawing on both the quantitative/qualitative and “fragmented literal similarity” approaches, the district court found the de minimis analysis was a derivation of the substantial similarity element when a defendant claims that the literal copying of a small and insignificant portion of the copyrighted work should be allowed. After listening to the copied segment, the sample, and both songs, the district court found that no reasonable juror, even one familiar with the works of George Clinton, would recognize the source of the sample without having been told of its source. This finding, coupled with findings concerning the quantitatively small amount of copying involved and the lack of qualitative similarity between the works, led the district court to conclude that Westbound could not prevail on its claims for copyright infringement of the sound recording.
Westbound does not challenge the district court’s characterization of either the segment copied from “Get Off” or the sample that appears in “100 Miles.” Nor does Westbound argue that there is some genuine dispute as to any material fact concerning the nature of the protected material in the two works. The heart of Westbound’s arguments is the claim that no substantial similarity or de minimis inquiry should be undertaken at all when the defendant has not disputed that it digitally sampled a copyrighted sound recording. We agree and accordingly must reverse the grant of summary judgment.
A. Digital Sampling of Copyrighted Sound Recordings
At the outset it is important to make clear the precise nature of our decision. Our conclusions are as follows:
1. The analysis that is appropriate for determining infringement of a musical composition copyright, is not the analysis that is to be applied to determine infringement of a sound recording. We address this issue only as it pertains to sound recording copyrights.
2. Since the district court decision essentially tracked the analysis that is made if a musical composition copyright were at issue, we depart from that analysis.
3. We would agree with the district court’s analysis on the question of originality if the composition copyright had been at issue. Having concluded that the statute requires a different analysis for sound recording copyrights, however, we also find that the requirement of originality is met by the fixation of sounds in the master recording. Only an actual physical copy of a master recording will be exactly the same as the copyrighted sound recording. We assume that Westbound will be able to establish it has a copyright in the sound recording and that a digital sample from the copyrighted sound recording was used in this case.
4. This case involves “digital sampling” which is a term of art well understood by the parties to this litigation and the music industry in general. Accordingly, we adopt the definition commonly accepted within the industry.
5. Because of the court’s limited technological knowledge in this specialized field, our opinion is limited to an instance of digital sampling of a sound recording protected by a valid copyright. If by analogy it is possible to extend our analysis to other forms of sampling, we leave it to others to do so.
6. Advances in technology coupled with the advent of the popularity of hip hop or rap music have made instances of digital sampling extremely common and have spawned a plethora of copyright disputes and litigation.
7. The music industry, as well as the courts, are best served if something approximating a bright-line test can be established. Not necessarily a “one size fits all” test, but one that, at least, adds clarity to what constitutes actionable infringement with regard to the digital sampling of copyrighted sound recordings.
B. Analysis
We do not set forth the arguments made by Westbound since our analysis differs somewhat from that offered by the plaintiff. Our analysis begins and largely ends with the applicable statute. Section 114(a) of Title 17 of the United States Code provides:
The exclusive rights of the owner of copyright in a sound recording are limited to the rights specified by clauses (1), (2), (3) and (6) of section 106, and do not include any right of performance under section 106(4).
Section 106 provides:
Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and
(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.
Section 114(b) states:
(b) The exclusive right of the owner of copyright in a sound recording under clause (1) of section 106 is limited to the right to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording. The exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 is limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality. The exclusive rights of the owner of copyright in a sound recording under clauses (1) and (2) of section 106 do not extend to the making or duplication of another sound recording that consists entirely of an independent fixation of other sounds, even though such sounds imitate or simulate those in the copyrighted sound recording. The exclusive rights of the owner of copyright in a sound recording under clauses (1), (2), and (3) of section 106 do not apply to sound recordings included in educational television and radio programs (as defined in section 397 of title 47) distributed or transmitted by or through public broadcasting entities (as defined by section 118(g)): Provided, That copies or phonorecords of said programs are not commercially distributed by or through public broadcasting entities to the general public.
Before discussing what we believe to be the import of the above quoted provisions of the statute, a little history is necessary. The copyright laws attempt to strike a balance between protecting original works and stifling further creativity. The provisions, for example, for compulsory licensing make it possible for “creators” to enjoy the fruits of their creations, but not to fence them off from the world at large. 17 U.S.C. § 115. Although musical compositions have always enjoyed copyright protection, it was not until 1971 that sound recordings were subject to a separate copyright. If one were to analogize to a book, it is not the book, i.e., the paper and binding, that is copyrightable, but its contents. There are probably any number of reasons why the decision was made by Congress to treat a sound recording differently from a book even though both are the medium in which an original work is fixed rather than the creation itself. None the least of them certainly were advances in technology which made the “pirating” of sound recordings an easy task. The balance that was struck was to give sound recording copyright holders the exclusive right “to duplicate the sound recording in the form of phonorecords or copies that directly or indirectly recapture the actual sounds fixed in the recording.” 17 U.S.C. § 114(b). This means that the world at large is free to imitate or simulate the creative work fixed in the recording so long as an actual copy of the sound recording itself is not made.(7) That leads us directly to the issue in this case. If you cannot pirate the whole sound recording, can you “lift” or “sample” something less than the whole. Our answer to that question is in the negative.
Section 114(b) provides that “[t]he exclusive right of the owner of copyright in a sound recording under clause (2) of section 106 is limited to the right to prepare a derivative work in which the actual sounds fixed in the sound recording are rearranged, remixed, or otherwise altered in sequence or quality.” In other words, a sound recording owner has the exclusive right to “sample” his own recording. We find much to recommend this interpretation.
To begin with, there is ease of enforcement. Get a license or do not sample. We do not see this as stifling creativity in any significant way. It must be remembered that if an artist wants to incorporate a “riff” from another work in his or her recording, he is free to duplicate the sound of that “riff” in the studio. Second, the market will control the license price and keep it within bounds. The sound recording copyright holder cannot exact a license fee greater than what it would cost the person seeking the license to just duplicate the sample in the course of making the new recording. Third, sampling is never accidental. It is not like the case of a composer who has a melody in his head, perhaps not even realizing that the reason he hears this melody is that it is the work of another which he had heard before. When you sample a sound recording you know you are taking another’s work product.
This analysis admittedly raises the question of why one should, without infringing, be able to take three notes from a musical composition, for example, but not three notes by way of sampling from a sound recording. Why is there no de minimis taking or why should substantial similarity not enter the equation.(10) Our first answer to this question is what we have earlier indicated. We think this result is dictated by the applicable statute. Second, even when a small part of a sound recording is sampled, the part taken is something of value. No further proof of that is necessary than the fact that the producer of the record or the artist on the record intentionally sampled because it would (1) save costs, or (2) add something to the new recording, or (3) both. For the sound recording copyright holder, it is not the “song” but the sounds that are fixed in the medium of his choice. When those sounds are sampled they are taken directly from that fixed medium. It is a physical taking rather than an intellectual one.
This case also illustrates the kind of mental, musicological, and technological gymnastics that would have to be employed if one were to adopt a de minimis or substantial similarity analysis. The district judge did an excellent job of navigating these troubled waters, but not without dint of great effort. When one considers that he has 800 other cases all involving different samples from different songs, the value of a principled bright-line rule becomes apparent. We would want to emphasize, however, that considerations of judicial economy are not what drives this opinion. If any consideration of economy is involved it is that of the music industry. As this case and other companion cases make clear, it would appear to be cheaper to license than to litigate.
Since our holding arguably sets forth a new rule, several other observations are in order.
First, although we followed no existing judicial precedent, we did not pull this interpretation out of thin air. Several law review and text writers, some of whom have been referenced in this opinion, have suggested that this is the proper interpretation of the copyright statute as it pertains to sound recordings. Since digital sampling has become so commonplace and rap music has become such a significant part of the record industry, it is not surprising that there are probably a hundred articles dealing with sampling and its ramifications. It is also not surprising that the viewpoint expressed in a number of these articles appears driven by whose ox is being gored. As is so often the case, where one stands depends on where one sits. For example, the sound recording copyright holders favor this interpretation as do the studio musicians and their labor organization. On the other hand, many of the hip hop artists may view this rule as stifling creativity. The record companies and performing artists are not all of one mind, however, since in many instances, today’s sampler is tomorrow’s samplee. The incidence of “live and let live” has been relatively high, which explains why so many instances of sampling go unprotested and why so many sampling controversies have been settled.
Second, to pursue further the subject of stifling creativity, many artists and record companies have sought licenses as a matter of course. Since there is no record of those instances of sampling that either go unnoticed or are ignored, one cannot come up with precise figures, but it is clear that a significant number of persons and companies have elected to go the licensing route. Also there is a large body of pre-1971 sound recordings that is not protected and is up for grabs as far as sampling is concerned. Additionally, just as many artists and companies choose to sample and take their chances, it is likely that will continue to be the case.
Third, the record industry, including the recording artists, has the ability and know-how to work out guidelines, including a fixed schedule of license fees, if they so choose.
Fourth, we realize we are announcing a new rule and because it is new, it should not play any role in the assessment of concepts such as “willful” or “intentional” in cases that are currently before the courts or had their genesis before this decision was announced.
Finally, and unfortunately, there is no Rosetta stone for the interpretation of the copyright statute. We have taken a “literal reading” approach. The legislative history is of little help because digital sampling wasn’t being done in 1971. If this is not what Congress intended or is not what they would intend now, it is easy enough for the record industry, as they have done in the past, to go back to Congress for a clarification or change in the law. This is the best place for the change to be made, rather than in the courts, because as this case demonstrates, the court is never aware of much more than the tip of the iceberg. To properly sort out this type of problem with its complex technical and business overtones, one needs the type of investigative resources as well as the ability to hold hearings that is possessed by Congress.
These conclusions require us to reverse the entry of summary judgment on Westbound’s claims against No Limit Films.
* * *
AFFIRMED in part, REVERSED in part, and REMANDED for further proceedings consistent with this opinion.
Funkadelic, Get Off Your Ass And Jam (1975)
N.W.A., 100 Miles and Runnin' (1990)
Questions:
- Consider Bridgeport in relation to Newton v. Diamond, which we read in Class 10. Under Bridgeport, are sound recordings more or less protected than musical works?
- Under Bridgeport, is the court required to consider whether the mechanically reproduced element of a sound recording is original?
- How should courts decide sampling cases?
The Mechanical License
Section 115 of the Copyright Act creates exception to the reproduction, adaptation, and distribution rights of the copyright owners of musical works by creating a compulsory licensing system. Essentially, it provides that once a phonorecord of a nondramatic musical work is distributed to the public, any other person can make a phonorecord of the same work and distribute it to the public, in exchange for a statutory fee.
In other words, the author of a musical work is entitled to create the first sound recording of that work, but as soon as it is released, anyone else can create a cover version, so long as they comply with the statutory notice requirements and pay the statutory licensing fee:
In the case of nondramatic musical works, the exclusive rights provided by clauses (1) and (3) of section 106, to make and to distribute phonorecords of such works, are subject to compulsory licensing under the conditions specified by this section.
(a) Availability and Scope of Compulsory License.—
(1) When phonorecords of a nondramatic musical work have been distributed to the public in the United States under the authority of the copyright owner, any other person, including those who make phonorecords or digital phonorecord deliveries, may, by complying with the provisions of this section, obtain a compulsory license to make and distribute phonorecords of the work. A person may obtain a compulsory license only if his or her primary purpose in making phonorecords is to distribute them to the public for private use, including by means of a digital phonorecord delivery. A person may not obtain a compulsory license for use of the work in the making of phonorecords duplicating a sound recording fixed by another, unless:
(i) such sound recording was fixed lawfully; and
(ii) the making of the phonorecords was authorized by the owner of copyright in the sound recording or, if the sound recording was fixed before February 15, 1972, by any person who fixed the sound recording pursuant to an express license from the owner of the copyright in the musical work or pursuant to a valid compulsory license for use of such work in a sound recording.
(2) A compulsory license includes the privilege of making a musical arrangement of the work to the extent necessary to conform it to the style or manner of interpretation of the performance involved, but the arrangement shall not change the basic melody or fundamental character of the work, and shall not be subject to protection as a derivative work under this title, except with the express consent of the copyright owner.
(b) Notice of Intention To Obtain Compulsory License.—
(1) Any person who wishes to obtain a compulsory license under this section shall, before or within thirty days after making, and before distributing any phonorecords of the work, serve notice of intention to do so on the copyright owner. If the registration or other public records of the Copyright Office do not identify the copyright owner and include an address at which notice can be served, it shall be sufficient to file the notice of intention in the Copyright Office. The notice shall comply, in form, content, and manner of service, with requirements that the Register of Copyrights shall prescribe by regulation.
(2) Failure to serve or file the notice required by clause (1) forecloses the possibility of a compulsory license and, in the absence of a negotiated license, renders the making and distribution of phonorecords actionable as acts of infringement under section 501 and fully subject to the remedies provided by sections 502 through 506 and 509.
(c) Royalty Payable Under Compulsory License.—
(1) To be entitled to receive royalties under a compulsory license, the copyright owner must be identified in the registration or other public records of the Copyright Office. The owner is entitled to royalties for phonorecords made and distributed after being so identified, but is not entitled to recover for any phonorecords previously made and distributed.
(2) Except as provided by clause (1), the royalty under a compulsory license shall be payable for every phonorecord made and distributed in accordance with the license. For this purpose, and other than as provided in paragraph (3), a phonorecord is considered “distributed” if the person exercising the compulsory license has voluntarily and permanently parted with its possession. With respect to each work embodied in the phonorecord, the royalty shall be either two and three-fourths cents, or one-half of one cent per minute of playing time or fraction thereof, whichever amount is larger.17 U.S.C. § 115.
Originally, the statutory royalty rate was 2.75 cents per record or 0.5 cents per minute, whichever was larger. In 1986, the royalty rate became 5 cents per record or 0.95 cents per minute, whichever was larger. And in 2006, it became 9.1 cents or 1.75 cents per minute, whichever is larger. Currently, the statutory royalty rate is determined by the Copyright Royalty Board, which meets every five years.
The mechanical license is subject to several limitations: it only applies to nondramatic musical works; it only applies to cover versions primarily intended for distribution to the public for private use; and it only applies if the original recording of the musical work was lawfully made.
The mechanical license allows people to record cover versions of a musical work. But it does not allow them to alter the fundamental character of a work. So, if a musical work is substantially altered, the mechanical license does not apply, and the user has created a derivative work that requires the consent of the author of the musical work.
Edward B. Marks Music Corp. v. Foullon, 171 F.2d 905 (2d Cir. 1949)
L. HAND, Circuit Judge.
This is an appeal from a judgment, dismissing a complaint in two counts: the first, for infringing the copyright of a Spanish dance song, entitled "Malaguena," by an unauthorized "arrangement"; the second, for making phonograph records of the "arrangement" and selling them without filing the notice which § 25(e) of the Copyright Act, 17 U.S.C.A. § 25(e), requires of those who would avail themselves of the compulsory license given by § 1(e), 17 U.S.C.A. § 1(e). The facts, which were all undisputed, were as follows. The plaintiff's assignor became the owner of a copyright of the words and music of the song, used it to make phonograph records, and in 1931 filed the notice required by § 1(e) of an owner who so uses the composition. The defendant, Foullon, had organized the defendant, United Masters, and was its president and one of its shareholders; and at some time before May 8, 1946 that company had made an "arrangement" of the plaintiff's song for a well-known group of performers. It is the making of this "arrangement" which is the infringement charged in the first count. On May 8 United Masters wrote to the plaintiff, declaring that it planned to make — "press" — phonograph records of the group's performance — naming them — and wished to get "copyright clearance" upon "Malaguena" and another song. The plaintiff agreed as to "Malaguena," and enclosed and executed what it called its "Mechanical License agreement," which United Masters in its turn also executed. This "License" gave to United Masters the right "to use the said musical composition * * * in the manufacture of its sound records in any form whatsoever," and in return United Masters agreed to pay two cents for each record, and to make "statements of account" and payment of the royalties as § 1(e) of the Copyright Act required. The "License" ended with the stipulation that the song should "not be used in connection with a musical medley for band or orchestra, or any other medley." United Masters had already made an acetate record of a performance by the group of its "arrangement"; and, either before or after, it coated this record with copper to form a matrix, and from the matrix made two "stampers," which after May 9 it sent to the Bard Record Company to "press": i.e., to produce those shellac records, which it delivered to United Masters. It is the manufacture of these records which is the infringement charged in the second count. United Masters never paid the agreed royalty, or filed any statements of account as it had agreed; and it is now insolvent. The judge dismissed the first count against United Masters without costs, but awarded against it on the second count a royalty of six cents a record, together with costs and attorneys' fees under § 1(e). He dismissed the complaint against Foullon without costs or allowance; and against the Bard Company without costs but with an allowance of $500 for attorneys' fees. Only the plaintiff has appealed.
The plaintiff's position is that the "Mechanical License agreement" must be taken, not as a contract or consensual license substituted for the compulsory license of § 1(e), but only as a recognition — a mere acknowledgment, as it were — that § 1(e) and § 25(e) did in fact govern the parties' rights and obligations. Turning to these sections, the plaintiff then argues that, although they gave United Masters a compulsory license, which allowed it to make records, those were only records of the copyrighted composition as it was, and did not authorize any "arrangement." The "arrangement" for the group of performers was therefore itself an infringement under § 1(e), and the manufacture of the records was a second infringement. In both aspects United Masters exposed itself to the remedies provided in § 25 as a tortfeasor. Foullon and the Bard Company were equally liable as contributors to both torts, and, since United Masters had not paid the prescribed royalties, it was also liable for triple damages under § 1(e).
Section 1(e) gives only a limited protection to musical compositions against reproduction by phonographic records; and evinces that unfriendliness towards extending the copyright of musical compositions to mechanical reproduction, which goes back to White-Smith Music Publishing Co. v. Apollo Company. This has apparently become embedded in the very foundation of the subject; for the several efforts which have been made to persuade Congress to be less meagre in relief have failed. Thus, it still remains true that any owner, who himself so uses his composition, or who even consents to such use by others, gives a license to all at a royalty of two cents. Any one, who takes advantage of the license, must, however, make monthly statements of his sales, if the owner demands it, and monthly payments of his royalties before the twentieth day of the month after they are made. Moreover, § 1(e) allows the judge to triple the royalties against him if he defaults in his payments; and § 25(e) does the same if he does not serve upon the owner notice of his intention in advance. These are the measure of the rights and liabilities under the compulsory license. On the other hand, it needs no argument to prove that the parties may substitute for them any other rights and obligations on which they can agree; and § 25(e) so recognizes in declaring "that whenever any person, in the absence of a license agreement, intends to use a copyrighted musical composition" by means of records, he shall file the notice we have just mentioned. The question at bar is whether the agreement of May 9, 1946 was "a license agreement."
Clearly it was. The plaintiff had filed the necessary notice on its part, it is true; and United Masters might have made records of the song as it stood at a royalty of two cents, merely by filing its corresponding notice, if in the language of § 25(e) it had been "relying" upon the compulsory license provision of § 1(e). But it did not wish to rely upon that provision, conceivably because it thought that it needed express consent for the "arrangement" already made, and for the manufacture of the records which it "planned." It had to choose between becoming a bare infringer and thereby exposing itself to the attendant remedies and seeking "a license agreement." By its letter of May 8, it chose the second course, and it got such an agreement, when both parties executed the "Mechanical License agreement." So far as the parties chose to incorporate into this any of the terms of § 1(e), these of course became the measure of their relations like its other terms; but that was only by virtue of the incorporation. Ex proprio vigore the statute fixed nothing between them.
So viewed, the question becomes whether the "License" released United Masters from the consequences of any existing infringement in composing the "arrangement" of "Malaguena" already made, and consented to its future use in manufacturing records. Even from within the four corners of the "License" it is plain that it did both. When the licensor excepted from the licensee's rights any "use" without its consent of the song in a "medley," the only reasonable implication was that other "arrangements" did not need its consent, for a medley is an "arrangement." It is not necessary to depend upon the earlier phrase: "in any form whatsover," which for argument we may suppose to refer only to the means of mechanical reproduction. This conclusion becomes irresistible when we consider the correspondence which went before. The "License" employed the word "use" several times, to describe the licensee's rights, but it always left its meaning of the word undefined.
What then was this "use" on which the whole bargain hinged? Since the "License" had left it at large, the law of New York — to which we must look to learn the meaning of the contract — admits previous negotiations to show that meaning; and if we turn to United Masters' letter of May 8 and the plaintiff's answer, all doubt disappears. For, when United Masters declared that it planned to "press" records for the group of performers, it was at once evident that it must have an "arrangement" of the song. When, therefore, both parties agreed to the "use" of the song in records, they could have meant only that particular "use."
Hence United Masters not only got a release for composing the "arrangement," and for any steps already taken in the manufacture of the records; but it got a consent to complete that manufacture and to sell the records. That consent also covered the Bard Company's share in the manufacture and its delivery of the finished product to United Masters for sale. The only liability at any time, or of any one, was that of United Masters, and that was contractual. Its failure to fulfill its obligations made it liable to triple damages because of the incorporation of § 1(e) in the "License"; and would have authorized the plaintiff to repudiate the "License." Had the plaintiff done so, any later use of the "arrangement" would have been an infringement; but that would not have made an infringement out of anything done while the "License" was in force.
Obviously the Bard Company is not liable for the royalties which United Masters agreed to pay, for it was not a party to the "License." If it is to be held at all, it must be because the "License" was limited to records wholly made by United Masters; and that would be quite absurd, for the plaintiff had neither information as to who was to make them, or any interest in it. Finally, although it was apparently an oversight for the judge to fail to grant "full costs" to the Bard Company, for § 40, 17 U.S.C.A. § 40, makes them preëmptory, the fact that he did not exercise all his powers does not invalid those which he did. We can conceive no reason for supposing that the two must stand or fall together.
Like any other officer, director or shareholder of a company, Foullon is not liable upon the "License," a contract of United Masters. The Bard Company will be allowed $400 for its attorneys' fees in this court; Foullon will be allowed $100.
Judgment affirmed.Strachborneo v. Arc Music, 357 F. Supp 1393 (S.D.N.Y. 1973)
Plaintiff, a citizen of California, brought this action on July 31, 1967, to enjoin infringement of plaintiff's copyrighted musical compositions and for an accounting of profits and damages resulting from past infringement. By an amended complaint, she also seeks damages for unfair competition, in the sale and exploitation of her musical compositions by defendants, which were allegedly "passed off" as owned by defendants.
Defendants' counterclaim charges infringement by plaintiff of its copyrighted musical compositions and unfair competition.
Parties and Jurisdiction
Defendants Arc Music Corporation ("Arc") and Dare Music, Inc. ("Dare") are New York corporations. Defendant McKinley Morganfield is a citizen of Illinois, who has performed professionally as a singer and musician in this District and throughout the country under his professional name, "Muddy Waters". Defendant Preston Foster ("Foster") is a citizen of the State of New York and a resident of this District.
The Court has jurisdiction of this action as to the first nine counts, arising under the copyright laws of the United States, 28 U.S.C. § 1338, and has pendent and diversity jurisdiction over Count X in the Complaint, alleging unfair competition.
What is MOJO?
An understanding of this litigation requires first that we define "MOJO". MOJO is a collective noun used to describe one or more talismanic objects believed to have power intrinsic to their nature, and believed able to impart power, or ward off evil or misfortune by being worn close to the body of, or possessed by, the person to whom the MOJO appertains. A simple example of MOJO would be a rabbit's foot. Other examples of MOJO, mentioned from time to time in the trial record, include such amulets as black cat bones, shrunken heads, lodestones, half dollar with seeds, four leaf clover, ashes, blacksnake skin, strands of hair and teeth. MOJO is often worn around the neck in a leather bag or carried on the person. MOJO may, in a pastoral society, be taken into the fields with the cattle.
Reliance on and belief in MOJO naturally leads to the conversational gambit, "Have you got your MOJO working?", or "I've got my MOJO working." A person approaching a crisis, such as an examination at school, would be sure to have his MOJO with him, and working.
Use of MOJO and reference to it in conversation and reliance on it, has been found generally among black people in the rural South. Although the expression "voodoo" has been used in the trial record, MOJO is different from voodoo.
MOJO is a commonplace part of the rhetoric of the culture of a substantial portion of the American people. As a figure of speech, the concept of having, or not having, one's MOJO working is not something in which any one person could assert originality, or establish a proprietary right. See infra, p. 1404, et seq.
The expressions MOJO and "I've got my MOJO working", also have a lewd secondary or slang meaning. That double entendre will be most apparent in the lyrics of some of the musical compositions hereinafter referred to, particularly those of Bill Cosby (Ex. N) and Jimmy Smith (Ex. 10).
Plaintiff's Background
Miss Stratchborneo, plaintiff herein, was 32 years of age at the time of trial. Since 1959 she has been engaged under the trade name of Cepha Publishing Co., in publishing sheet music recordings and verse, arrangements, words and music for songs of the sort commonly described as "Pop Rock", in that portion of the music field called "Rhythm & Blues", or sometimes, just "R&B".
Prior to 1959, she worked as a singer and musician, performing in clubs, military installations, hospitals, prisons and other places, and was also employed during 1957 and 1958 by a record company.
She is a vocalist and dancer, has done some acting and recording and prior to 1959 assisted at a record publishing company, in teaching, vocalizing, choreography and selecting R&B tunes for release.
She has written so-called "lead sheets", whereby popular songs are merchandised, and whereby applications for copyright are made. She owns various record labels, including Tide, Edit and Colbert.
Miss Stratchborneo stated that she had been familiar with MOJO during all her life, that in Borneo today, MOJO is used to the greatest extent, "where people will have MOJO in their fields . . where their cattle is, for their babies", (tr. p. 8).
Origin of Plaintiff's (Triune/Bright) Musical Composition
During childhood, plaintiff had often versified about MOJO activity and had used the expression "I got my MOJO working". She sang a song containing the lyric versification "Got My MOJO Working", in 1955 in connection with a local television commercial for a California automobile dealer, and thereafter sang songs about MOJO with various verses at various times and places in California, at volunteer performances given for servicemen in hospitals, to prisoners, or wherever her services were welcomed.
In 1960, she wrote a lead sheet (Ex. 1) entitled "MOJO WORKOUT" (hereinafter for convenience, the "Bright" version). This contained the words "I got my MOJO working". The author listed on the lead sheet as having created the words and music is "Julian Bright a/k/a Larry Bright", but I am satisfied that in fact Larry Bright was not the author of "MOJO WORKOUT".
Shortly thereafter, in about 1960, plaintiff created a new lead sheet, also entitled "MOJO WORKOUT" (Ex. 2), bearing the inscription "words and music by Triune-Bright". Triune is a name used by plaintiff and two other persons; Miss Paula Sapp a/k/a Paula DePores and Mrs. Orena Fulmer. These persons, acting in concert, describe themselves as "Triune". Sapp and Fulmer participated in some undisclosed manner with plaintiff in the creation of the second version of "MOJO WORKOUT," sometimes described for convenience as the "Triune-Bright" version.
A registration of copyright was filed by Julian Bright a/k/a Larry Bright for "MOJO WORKOUT" on March 16, 1960. Such filing was effected by plaintiff. On August 31, 1966, an additional certificate of registration was filed with respect to "MOJO WORKOUT (Got My MOJO Working)". This filing was made by plaintiff and lists the three individuals constituting Triune as authors of new words and music. The 1966 registration was for "additional words and music" not found in the Larry Bright version, and for the first time, registered the Triune-Bright version.
There is also a third, Triune, version entitled "MOJO WORKOUT (GOT MY MOJO WORKING)", which purportedly was created January 4, 1960. This date is based upon a certificate by a California notary in the nature of an acknowledgement by plaintiff, DePores and Fulmer, attached by a staple to a lead sheet not otherwise filed or published.
I decline to find that this so-called Triune version was completed prior in time to the Bright version. The notary public was not produced before me, and there is no corroboration, or intrinsic evidence which demonstrates that this document existed prior in time to the Larry Bright copyright certificate filed March 16, 1960 in the Copyright Office. This issue, however, is not critical to the case.
By an assignment dated March 27, 1960, and filed in the Copyright Office on February 20, 1964, Julian Bright a/k/a Larry Bright assigned his interests in the "MOJO WORKOUT" copyright to plaintiff.
Bright recorded, and plaintiff released, or published, under the trade name "Tide Records" a 45 r.p.m. single, entitled "MOJO WORKOUT (Dance)". This record listed Julian Bright as the author and Larry Bright (actually the same person), as the performer. Cepha Publishing Co. was indicated thereon as the copyright owner.
The Larry Bright record of 1960 unmistakably was derived from the two lead sheets, Bright version and Triune-Bright version, previously mentioned. It was released in March, 1960, and was played with some frequency during that year on various radio stations specializing in pop rock music.
Plaintiff designed a dance referred to as "Do The MOJO". The intricate steps of this juvenile diversion were written out with diagrams and distributed to the public by some of the record dealers (Ex. 8). Bright, a singer and guitar player who is white, came to be known as Larry "Mojo" Bright. See publicity still photograph, Ex. 9. In the "Fabulous Forty Survey" of radio station KFWB in Los Angeles, California, "MOJO WORKOUT" appears as a "record heard first on KFWB". It was 33rd in popularity for the week ending April 16, 1960, 22nd for the week ending April 23, 1960, and 16th for the week ending May 7, 1960.
A trade publication "The Billboard", on June 6, 1960, showed "MOJO WORKOUT" as No. 2 in a list of 15, below the so-called "Hot Hundred", and on June 25, 1960, "Cashbox Top Hundred", a trade publication, showed the record as No. 96. Plaintiff also licensed "MOJO WORKOUT" to others to make recordings.
As damages were stipulated to be disposed of subsequent to the trial of the issues of this action, in the event an accounting should be directed, there was no proof received by me as to the profits realized from the sale of records, mechanical licenses, or the licensing of radio performance, but the musical composition was of substantial economic benefit to plaintiff.
Plaintiff testified that the first notice she had of defendants' activities with respect to MOJO was when Jimmy Smith, in 1966, issued a record in the same market, recorded by him on Verve Records, a division of Metro, Goldwyn, Mayer, Inc., and entitled "Got My MOJO Working". This record indicates defendant Morganfield as the author, and defendant Arc as the proprietor of the work. It occupies both sides of a single 45 r.p.m. record and the label indicates that it was taken from an album entitled "Got My MOJO Working".
Plaintiff asked Verve Records to take a mechanical license, but Verve declined to do so, having already taken a license from Dare. This led to a demand and refusal, and this litigation eventuated.
Plaintiff testified that she had never heard any other professional renditions of "I've Got My MOJO Working" prior to 1966, and that no complaints or demands upon her had been made by any other record company, publishing company or performer.
Plaintiff did not perform "MOJO WORKOUT" as found in the Triune-Bright version or in the Larry Bright version prior to 1960. I decline to find that the Triune version was performed by or for her prior to March, 1960. She did, as heretofore noted, perform MOJO songs according to the same rhythm, using different words from time to time, and changed the words many times to suit the occasion. The expression "I've Got My MOJO Working" was, however, used by her in connection with a pop rock song beginning in 1955.
By her own evidence, plaintiff did not write the Triune version any earlier than Thanksgiving, 1959, or about January 4, 1960. On all of the evidence, I find that origin of the Triune version prior to the Bright version (Ex. 1), or prior to March, 1960, is not established.
Since 1955, plaintiff and her colleagues in Triune have always called their song "Got My MOJO Working", or "MOJO WORKOUT". The melody and rhythm never changed, but the lyrics changed many times.
In answers to interrogatories, plaintiff stated that she and Miss Sapp and Mrs. Fulmer completed the musical composition during January, 1960, after "working for a period of time" in Los Angeles.
They never filed a claim for copyright of the Triune version; they did claim copyright in Triune-Bright, as previously noted, on December 19, 1966, and plaintiff filed for the Bright version, in Bright's name on March 25, 1960.
Origin of Defendants' (Foster) Musical Composition
Saul Rabinowitz, President and principal of defendant Dare, is presently engaged as an executive of CBS Records International and directs the operations of overseas music publishing firms controlled by CBS. He also has oversight of licensing recorded products from other companies for distribution overseas by CBS and advises with respect to products recorded by overseas companies. Formerly, he was principally engaged in the conduct of Dare's record business.
Rabinowitz first met defendant Preston Foster, also known as Red Foster, in 1957, at which time Foster visited him, offered for sale and played a number of songs. He sang a song, "I'VE GOT MY MOJO WORKING", accompanying himself by guitar, and played a demonstration record which he had previously recorded (Ex. F).
Foster, on October 29, 1956, had filed a claim to copyright for that song as author. On January 9, 1957, Dare entered into a mimeographed form publisher's contract with Preston Foster, by which it acquired "I've Got My Mo-Jo Working". By his agreement, Foster reserved a royalty and assigned his copyright. The assignment was recorded February 16, 1965 in the Copyright Office. In 1957, Dare also acquired the Foster lead sheet and the demonstration record.
A month or two later in 1957, Rabinowitz played Foster's demonstration record for singer Ann Cole. Ann Cole learned the song and recorded her artistic arrangement or version of it for Baton Records, under license from Dare. This record is entitled "Got My Mo-Jo Working (But It Just Won't Work On You)", and lists Foster as the author. The Ann Cole record was released, at least prior to April 20, 1957, because "Cashbox", a trade publication, on that date, refers to the Ann Cole rendition as the "Cashbox R&B Sleeper of the Week".
At about the same time, a record "Got My Mojo Working", sung by Muddy Waters, was issued by Chess Records. This also was referred to as a "sleeper of the week" in the same April 20, 1957 edition of Cashbox. Rabinowitz learned of the Muddy Waters rendition within two or so days after samples of the Ann Cole record had been released to distributors.
Rabinowitz testified that Miss Cole had just returned from a road tour with Muddy Waters' band. He concluded that she had been singing the song while on tour, and that Muddy Waters had liked it and recorded it, claiming authorship for himself. The Muddy Waters record bears a copyright credit for defendant Arc, and shows defendant McKinley Morganfield, the true name of Muddy Waters, as the author of the work, and "Muddy Waters" as the singer.
Rabinowitz asserted Dare's claim of ownership by reason of assignment to it of the Preston Foster copyright and made claim on Arc. This controversy was later settled by an agreement between Dare and Arc by which Arc, in effect, in consideration of a royalty interest in "Got My Mojo Working", conceded the validity of the Preston Foster copyright, ownership thereof by Dare, and infringement, although not so denominated. As between Dare and Arc, Dare was to be deemed for all purposes the owner of the song in dealing with third parties. Morganfield (Waters) was not a signatory to the settlement agreement (Ex. 26) between Dare and Arc.
Long prior to the release in March, 1960, of the plaintiff's Larry Bright record, "MOJO WORKOUT", and prior to March 25, 1960, when Larry Bright, as purported author filed claim to copyright, through plaintiff, defendants Dare, Arc, Foster and Morganfield were all asserting a property interest in and had recorded and marketed MOJO songs. n8
Performance and Use by Others
Dare had licensed Verve Records, a division of Metro-Goldwyn-Mayer ("MGM"), to record and issue the 1966 Jimmy Smith version "Got My MOJO Working" (Ex. 10), and had received license fees from Broadcast Music Incorporated ("BMI") and from MGM.
Producers of other records licensed by Dare and BMI, as distributor of performance royalties, have withheld payment pending the termination of this litigation. Dare has also issued licenses to many other recording artists for "Got My Mojo Working", or "I've Got My Mojo Working". These include such well known record companies as Atlantic, Columbia, Capital, London and Liberty Records. Recording artists include Johnny Rivers, Sandy Nelson, Sam the Sham & The Pharaohs, Muddy Waters, Jimmy Smith, Art Blakey, Chico Hamilton, Carla Thomas, Lester Lanin, Manfred Mann, The Capitols, Conway Twitty, Columbus Smith, The Powers of Blue, The Knockouts, The Big Beats, Billy Hawks, Ben Bernay, Long John Baldry and Linda Gayle.
Dare and plaintiff have each received performance royalties from BMI. Rabinowitz explained that whether the computer tabulation credited the royalty to plaintiff, or to Dare depended on how the titles were reported; that the titles "MOJO WORKOUT," "I'VE GOT MY MOJO WORKING" and "GOT MY MOJO WORKING" are so similar that "depending on how the radio station announces its use, that will govern BMI as to which publisher to pay" (tr. p. 203). This practical problem is, however, beyond the scope of this litigation.
Infringement
Proof of copying is basic to any claim of infringement. Idential works, which these are not, could, if independently created, each receive statutory copyright protection, and each withstand charges, by the other, of infringement. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S. Ct. 835, 80 L. Ed. 1392 (1936).
Access
There is no direct evidence of access by Bright or Triune or plaintiff to Preston Foster's lead sheet, or demonstration record, or to the Ann Cole or Muddy Waters recordings, and likewise, no such evidence of access by Preston Foster, Ann Cole or Muddy Waters to the various versions of music and lyrics having to do with MOJO, which plaintiff was singing at hospitals, prisons and elsewhere, prior to 1957.
Defendants' position (tr. p. 464) is that the chronology of the discs and striking similarities in the lyrics and melody of the various records are such as to preclude coincidence, and that we should infer copying, intrinsically from a comparison of the records and their release dates.
Plaintiff also seeks to draw an inference of copying circumstantially from the records themselves, but her attempt is frustrated by her inability to prove existence and ownership of an identifiable version prior to March, 1960.
The only evidence of access by plaintiff is found in the fact that the Waters and Cole versions were sold widely in 1957 in the field of music in which plaintiff was engaged and were broadcast. This is the "reasonable opportunity to view or read plaintiff's work", which is all that is needed to show access. Bevan v. Columbia Broadcasting System, Inc., 329 F. Supp. 601, 605 (S.D.N.Y. 1971); Blazon, Inc. v. Deluxe Game Corp., 268 F. Supp. 416, 422 (S.D.N.Y. 1965). No evidence whatever of access by Foster, Cole, Waters or Rabinowitz to plaintiff's localized performances of prior MOJO songs is shown.
"Striking" Similarity
Even if access cannot be established by showing a reasonable opportunity for the alleged infringer to have seen or heard the complaining work, access, and also copying, may be inferred where the accused work is "strikingly similar" to a pre-existing complaining work. Arnstein v. Porter, 154 F.2d 464, 468-469, aff'd. on rehearing, 158 F.2d 795 (2d Cir. 1946). To prove that similarities are striking, claimant must demonstrate that such similarities are of a kind that can only be explained by copying, rather than by coincidence, independent creation, or prior common source. See Jones v. Supreme Music Corp., 101 F. Supp. 989, 991 (S.D.N.Y. 1951).
Expert testimony may and should be used to aid the Court in analyzing the works involved in order to draw the inference of copying from striking similarities. Arnstein v. Porter, supra, 154 F.2d at 468.
Plaintiff's expert, Mr. Reuben Phillips, is an accomplished musician. He is the music director of the Apollo Theatre in New York City, having held that position since 1952. Previously, he was a musician with various bands, including Andy Kirk, Lionel Hampton, Louis Jordan and Count Basie, and was a musical conductor with Eartha Kitt and Josephine Baker. He played saxophone with these bands and was a saxophone player in the Roxy Theatre house band. He is an experienced music arranger, and now writes original music, primarily in the area of rock and roll arrangements, for the house band at the Apollo Theatre.
Mr. Phillips, a black man, grew up in Providence, Kentucky. He had heard the lyric, or expression, "Got my MOJO working, but it just won't work on you" first during his childhood in that rural community. He describes MOJO as a phrase used in family relationships, in the context of "I'll put my Mojo on you", or "You got your Mojo with you today?". As a child he said that he wore MOJO around his neck, and used that kind of expression in conversations, with other children in his home town.
Plaintiff urges defendants may not rely on the Foster lead sheet, demonstration record and the Foster copyright registration because of technical deficiencies in the presentation as filed. The lyric is clear enough on Foster's lead sheet. Phillips, plaintiff's expert, admits that the first section of the lead sheet is melodically the same as the music which appears on the Foster demonstration record and the Ann Cole record. In the second section, or refrain, only about two-thirds of the notes correctly track those recordings, but the similarity is very great. James J. Wisner, expert for defendants, expressed the opinion that Foster's lead sheet set forth most of the music and rhythm which Foster's demonstration record contained.
Following the observation of the ordinary observer or audience member, the average reasonable man (Harold Lloyd Corporation v. Witwer, 9 Cir., 65 F.2d 1, 18), and giving due regard to the experts, I find that the various performers, including Foster, Cole, Waters and Smith, who claim to derive their versions from Foster's lead sheet, did in fact do so, but plaintiff's Larry Bright dance version, "MOJO WORKOUT," was not copied or derived from, nor is it strikingly similar to any of defendants' pre-1960 renditions or versions. Testimony by the experts that any version is "closer to" either contending source work is not the sort of analysis as will imply similarity sufficient to infer copying. In this genre of music and elsewhere, "only a few [permutations] are pleasing; and much fewer still suit the infantile demands of the popular ear". Darrell v. Joe Morris Music Co., 113 F.2d 80 (2d Cir. 1940).
Nor, can we say from any evidence before us that Bright or plaintiff infringed the lyrics used prior to 1960 by any of defendants' artists. The whole concept of MOJO in the context used in these lyrics was so commonplace in 1957 as to be substantially within the public domain. In presenting a MOJO song in a dance version, and because of the obvious differences in the lyrics and music, I find that the Bright version did not infringe any of the defendants' versions.
"Substantial" Similarity
In determining what part of a complaining work is protected by copyright, it must be remembered that the Copyright Act does not afford a monopoly over ideas. Morrissey v. Proctor & Gamble, 379 F.2d 675 (1st Cir. 1967); Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir. 1930); Northern Music Corp. v. King Record Distributing Co., 105 F. Supp. 393 (S.D.N.Y. 1952). What copyright does protect is the original use of ideas, the "expression" of ideas. Therefore, substantial similarity cannot be established herein simply by showing that both the accused and complaining songs focus on the MOJO idea; each party to prevail must establish that the adverse party, in a material way, tracked his or her treatment of that idea.
Nor will substantial similarity be found if only a small, common phrase appears in both the accused and complaining songs; unless the reappearing phrase is especially unique or qualitatively important, there is no basis for inferring copying. See Heim v. Universal Pictures, Co., Inc., 154 F.2d 480, 487 (2d Cir. 1946); Darrell v. Joe Morris Music Co., supra; O'Brien v. Chappel & Co., 159 F. Supp. 58, 59 (S.D.N.Y. 1958). Indeed, common phrases are generally not susceptible to copyright protection. O'Brien v. Chappel & Co., supra.
Additionally, material that is in the public domain can be used by an author; substantial similarity is not met by noting the appearance of such material in the accused work. Sheldon v. Metro-Goldwyn Pictures Corp., supra, cf. Whitney v. Ross Jungnickel, Inc., 179 F. Supp. 751 (S.D.N.Y. 1960). In the Whitney case, both the accused and complaining songs had, in effect, the same title and the identical first two lines; the first line was taken from the public domain. Despite the fact that plaintiff's song had been published, recorded, and performed, the Court declined to find that defendant's assignor had copied plaintiff's song.
Where, as here, words and music have been integrated in a single work, the copyright of such work as a musical composition will protect against unauthorized use of the words or lyrics alone, as well as against unauthorized use of the music alone or of a combination of music and words. However, in determining whether an accused, short popular song consisting of words and music, of the type involved herein, replicates the essence of a complaining work, initial focus should be placed on music and lyrics taken together, as necessary parts of the composition. See Shapiro, Bernstein & Co. v. Jerry Vogel Music Co., 161 F.2d 406, 409 (2d Cir.), cert. denied, 331 U.S. 820, 67 S. Ct. 1310, 91 L. Ed. 1837 (1947).
I find no infringement of plaintiff's "MOJO WORKOUT" by the 1966 Jimmy Smith record. Licensed by Dare, the latter is a reasonable artistic variation on the Preston Foster 1956 composition, as modified by the Cole and Waters versions. A licensee has the right so to alter a copyrighted work to suit his own style and interpretation. Its source remains with defendant's prior use of the same song.
Aside from some similarities in the opening passages, the works sound, to the non-professional customer's ear, quite different from plaintiff's work. Even the first sections seem to convey different moods. The lyrics vary, and in Smith the secondary lewd meaning of MOJO is perhaps more apparent. No infringement is found of plaintiff's copyright by the Jimmy Smith 1966 record.
It follows from the foregoing that all parties to this litigation have the right to produce their respective different MOJO works. Plaintiffs may produce the dance, "MOJO WORKOUT," and songs which represent identifiable versions of it, or the Triune-Bright version. Defendant Dare and its licensees may continue to produce and use the musical composition reflected in the Foster lead sheets as originally performed by Foster, Ann Cole, Muddy Waters and Jimmy Smith.
The Court finds sufficient differences in the plaintiff's composition and the defendants' compositions to militate against finding of infringement, copying or passing off. The lyrics, where the greatest similarity occurs, relate to a matter which may not be appropriated, no more so than any other song of unrequited love or lust.
No evidentiary basis is found to sustain plaintiff's 10th cause of action for unfair competition, by "passing off". Plaintiff did not, nor could she, attain any right to secondary meaning, or the identification of the title, lyric or concept as plaintiff's work in the public mind. Defendants have not traded unlawfully or otherwise upon plaintiff's popularity or good will, or passed off any songs or musical compositions or lyrics as plaintiff's, to her damage. Nor have they succeeded in convincing the record manufacturing trade that plaintiff's musical compositions are owned or controlled by either Arc or Dare (Complaint, para. 95). Nor do I find plaintiff guilty of any unfair competition or passing off of her song, as that of defendants.
The Court is not unaware of the difficulties created in this action by the problem of mechanical licenses of MOJO songs which others have recorded, or will. [17 U.S.C. § 1(e); American Metropolitan Enterprises of New York, Inc. v. Warner Bros. Records, Inc., 389 F.2d 903 (2d Cir. 1968).] In view of the extensive recordation of MOJO, and the instant dispute between plaintiff and Dare, apparently BMI has ceased the distribution of performance and mechanical royalties, pending the outcome of this litigation.
For example, Cosby performed a MOJO song which could have been performed as a non-infringing work and free of any royalty [cf. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S. Ct. 835, 80 L. Ed. 1392 (1936)]. Plaintiff apparently won a race and became the first to assert claim for license with Warner Bros. Cosby titled his song as "MOJO WORKOUT," with an authorship credit to Bright, and mechanical royalty to plaintiff.
We find no situation where defendants licensed a work clearly derived by copying, or as an alteration in style or arrangement of "MOJO WORKOUT." Records or performances of its song, licensed by Dare, should be readily separable by BMI and the licensees, from those performances, if any, of plaintiff's MOJO songs.
While we understand the practical difficulty presented by the fact that the titles are similar, and when performances are reported, it is often impossible to ascertain later, exactly whose composition was used, this problem is not one which we may hope to resolve on this trial record.
As we have determined that the respective compositions do not infringe, and are each entitled to the protection of the copyright laws, we are unable to divide such performance and mechanical royalties as may presently be held in escrow by BMI. Furthermore, BMI is not a party to the litigation, nor are those who were obligated in the first instance to make the payments.
Each party has contributed enough original words and music to the MOJO idea, and to a phrase in public domain, so as to have an original work, which has and is entitled to copyright protection and which the owner may exploit.
Conclusion
I find that plaintiff is the owner of a valid copyright, originally issued to Bright in 1960, and duly assigned to her, covering the words and music of "MOJO WORKOUT," a dance, as performed by Bright on a recording, Ex. 6, and also as set forth in a 1960 lead sheet filed in the Copyright Office, and a further copyright for additional words and music filed in 1966 (No. EU 969465), and that such work is an original composition of words and music, made by Miss Stratchborneo, Miss Sapp a/k/a De Pores and Mrs. Fulmer, which does not infringe any rights of defendants.
I find that defendant Dare is the owner of a valid copyright originally issued to Foster on October 29, 1956 (No. EU 462214) and duly assigned to Dare, covering the words and music of "GOT MY MOJO WORKING," as set forth in a 1956 lead sheet filed in the Copyright Office and on the demonstration record, Ex. 6, and that such work is an original musical composition of words and music made by Preston Foster, which does not infringe any rights of plaintiff.
I find no unfair competition, or "passing off" by any party to this litigation, of its or her musical property as that of the other.
The Court adjudges that all relief shall be denied, and that no party recover costs. The Clerk shall enter judgment as required by Rule 58, F.R. Civ. P. The foregoing constitutes findings of fact and conclusions of law as required by Rule 52, F.R. Civ. P.Questions:
- Is the mechanical license justified?
- Courts have interpreted the mechanical license to cover reproductions of musical works, but not derivative works. Does that make sense?
