Scorpio Music, et al. v. Victor Willis

US Dist. Ct., S.D. Cal.

Order granting defendant’s motion to dismiss, May 7, 2012

Facts:

Willis is the original lead singer of the Village People.  After 1977, Willis granted his copyright interest in thirty-three (33) musical compositions (including YMCA, In the Navy, and Go West) to Can’t Stop Music (“CSM”).  Scorpio Music is a French music publisher.

Plaintiffs alleged that between 1977 and 1979, they hired Willis to translate the lyrics of and/or create new lyrics for certain musical compositions.  By way of agreement, Willis transferred his copyright interest in the 33 songs to CSM, and CSM assigned to Scorpio its rights in the lyrics.

In January 2011, Willis served on Plaintiffs a “Notice of Termination of Post-1977 Grants of Copyright on Certain Works of Victor Willis” with respect to his interest in the 33 songs.  Plaintiffs sued for declaratory judgment that Willis has no right, title or interest in the copyrights in the songs, requiring Willis to withdraw the notice of termination, and enjoining Willis from making any claims in the songs.  Willis moved to dismiss Plaintiff’s complaint.

Decision:

Plaintiffs argued that Willis’ notice of termination is not valid because Willis is the only author who served a notice of termination. The issue was whether, in a case where joint authors of a work transfer their respective copyright interests through separate agreements, a single author may alone terminate his separate grant of his copyright interest in the joint work or whether a majority of all the authors is necessary to terminate that grant.  In a well-reasoned opinion, the Court dismissed Plaintiff’s arguments and held that since Willis was the only person who executed the grants of his copyright interests in the Compositions, he alone has the ability to terminate those rights.  A joint author who separately transfers his copyright interest may unilaterally terminate that grant.  However, if two or more joint authors join in the grant of their copyright interests, a majority of the authors is necessary to terminate the grant.

Plaintiffs also argued that, if Willis is found to have a right to terminate his grant of copyright interest in the songs, that he is limited to the same percentage ownership as he receives as compensation under the agreements with Plaintiffs (which ranged from 12 to 20%).  The Court easily dismissed this argument, explaining that Willis gets back exactly what he transferred (which may have been as much as a ½ undivided interest in the songs.)

Analysis:

For my money, this case is not a “game-changer”.  The Plaintiffs dropped their work for hire argument, so it was not addressed substantively by the Court.

As the Court observed, absent a different agreement among joint authors, joint authors share equally in the ownership of a joint work, even if their respective contributions to the joint work are not equal—even record producers and audio engineers can be considered to be joint authors of a joint work, e.g., a sound recording.  Scorpio v. Willis would forestall an argument from record labels that recording artists cannot effect a termination of transfer without a majority of all joint authors, including producers and engineers, if applicable, even if the producers and engineers did not execute a transfer of the recordings to the label.  In this respect, this case is significant.

However, recording artists should be aware that if sound recordings are not works made for hire, all joint authors are able to terminate their transfers, including producers and engineers.  Be careful what you wish for.

Most importantly, the facts of this case differ significantly from the facts I expect to be at issue in the bulk of termination of transfer issues in the future.   That is, artists that recorded songs pursuant to exclusive recording agreements containing express work for hire language. Consider that there are two (2) definitions of a work made for hire: (1) a work prepared by an employee within the scope of the employee’s employment; and (2) certain works specially ordered or commissioned, if the parties expressly agree in a written instrument that the work shall be considered a work made for hire.  In this case, Plaintiff’s argument appears to have been limited to definition No. 1, indeed there was no mention of the language of the agreement at issue in this decision.  (In its motion to dismiss, counsel for Willis stated that the agreements at issue do not have any express provisions that use the phrase “writer for hire” or “employee” or “work made for hire.”)