Part 31

With some six months of background behind us, its time to put on our oxygen masks, break Camp VII, and go for the summit: Capitol v. Naxos. But first, there is one ridge to traverse: ITAR-TASS News Agency v. Russian Kurier, a case from 1998. The details are not terribly relevant: the giant quasi-national Russian news bureau TASS accused Kurier, a Brooklyn-based Russian-language weekly newspaper with a circulation of about 20,000, of copying its material. The only really relevant facts were: 1) the TASS material originated in Russia; and, 2) the infringement, if any, took place in Brooklyn. Almost every aspect of the case turned on whether Russian or American copyright law should apply. The trial court had determined that Russian copyright law should apply—sort of.

Under the Berne Convention, an author of one member state is entitled to the same copyright protection in all other member states as in one’s home nation. Despite this, the conventional wisdom was that of David Nimmer (Melville’s son), who said that “the applicable law is the copyright law of the state in which the infringement occurred,” not the author’s home or the place where the work was first published. Judge Newman, who wrote the appellate opinion, was unhappy with both the trial court and Nimmer’s formulation because it didn’t break “applicable law” down into its (supposedly) two components: ownership and scope of rights.

Normally, one would think that Russian law should be applied, because, as the Berne Convention states, a work should be treated in the U.S. as in Russia. Not so, according to Newman. He ruled that “the treaty does not supply a choice of law rule for determining ownership [of an intellectual property].” Thus, the choice of law rule defaults to that of the jurisdiction where the court sits, i.e. the United States. The general rule under U.S. law is that the jurisdiction with “the most significant relationship to the persons and parties” determines the law to be used. Again, Russian law. Again, not so fast. The court declared an exception: if one has “an exclusive right under a copyright” pursuant to section 501(b) of the 1976 Copyright Act, “including one determined according to foreign law,” then American law shall be used.

But wait. Section 501(b) is the basic “standing” requirement under the Copyright Act. Unless one can meet that condition directly (holding an American copyright) or indirectly (holding a foreign copyright of a fellow Berne Convention member), the minimum threshold for bringing suit in federal court is not satisfied, and one’s case will be dismissed at the start. Judge Newman had created a clever Catch-22: if you can’t meet section 501(b), you can’t get in the door of the courthouse for lack of standing; and if you can, your ownership will be determined by American law because anything that meets 501(b) is an exception to the general choice of law rule. Newman went through an elaborate ritual of applying Russian law, but the criteria under section 501(b) is that one must be a legal or beneficial owner of an exclusive right under a copyright, and Newman determined that nothing under Russian law gave anything comparable to American exclusive copyrights to newspaper publishers. In other words, the issue wasn’t whether the newspaper articles were protected under Russian law, but whether the Russian newspapers had standing to be in an American court.

Frankly, the entire line of argument was nothing but an elaborate way of justifying the Nimmer Rule: “The applicable law is the copyright law of the state in which the infringement occurred, not that of the state of which the author is a national, or in which the work is first published.” One might also add: “the Berne Convention be damned.”

To be continued…

Part 30

At this point, Congress had enough of this whole publication business and stepped in by amending a new subpart (b) to section 303 of the 1976 Copyright Act that said that “the distribution before January 1, 1978 of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.” So much for La Cienega v. Z .Z. Top and Mayhew v. Gusto. But not so fast.

Aubrey Mayhew had initiated another suit, this time against Tommy Allsup, before the new law became effective on November 21, 1997, and unlike his earlier case, this one made it all the way to the Sixth Circuit. Normally, new laws can’t be applied retroactively, but when Congress writes one with the specific intent of making it retrospective, that’s another story. Thus, Mayhew’s “A Big Ball in Cow Town” was not published in 1949 or 1958 when Hoyle Nix, who owned it at the time and subsequently sold it to Mayhew, released it on records. Of the three judges, only Judge Wellford had any comment about the ongoing legal controversy. He believed the facts of Leeds v. Gusto, upon which Mayhew v. Gusto was based, contained fundamentally different facts (probably because it was a dramatic, and not a musical work), so had the legislative change not mooted the question, he said he would have come down in favor of Rosette and against Z. Z. Top.

But this proved to be an issue that simply refused to die. In 2000, more than two years after the 303(b) amendment, the Ninth Circuit in California (home of the Z. Z. Top opinion) heard ABKCO Music v. Laverne. The dispute this time was over some older Rolling Stones tunes, “Love in Vain” and “Stop Breakin’ Down.” They had originally been composed and recorded by bluesman Robert Johnson in 1938 and 1939. The Stones versions were released in 1970 and 1972. The Stones versions were copyrighted in ’70 and ’72 on sheet music as derivatives of public domain songs. The original Johnson recordings were re-released on CD by Columbia in 1990. Columbia paid royalties to the Johnson estate based on common-law copyright. ABKCO (owners of the Stones versions) declined to recognize the Johnson common-law copyrights. Laverne, representing the Johnson estate, registered copyright on the Columbia releases in 1991 with Columbia’s consent. The Johnson estate demanded a license for use of the songs from ABKCO. Litigation ensued. ABKCO asserted that the compositions were published in 1938-39 when the Johnson records were issued and their copyright lapsed at the end of 28 years for failure to file for renewal.

ABKCO argued that section 303(b) could not be applied retroactively because the lawsuit was already underway at the time the statute was changed. Generally speaking, a legislature cannot reverse a law in order to change the outcome of pending litigation. On the other hand, a law that merely clarifies an existing policy is okay. There was little or no precedent in dealing with a law whose very nature was to implement a retroactive policy so as to intentionally create two chronologically distinct categories of rights-holders in property.

The court noted that “there is good argument that the 1997 amendment simply clarifies what the meaning of the 1909 Act was all along; namely that the distribution of phonorecords did not constitute publication . . . the policy of the Copyright Office had always been that distribution of a phonorecord before 1978 does not publish the underlying musical composition.” Moreover, “section 303(b) would make no sense if it were to be applied solely prospectively, because it explicitly applies to conduct occurring before January 1, 1978.” The Circuit Court remanded the case back to the district court because the copyright status of the Johnson songs was still unclear and additional facts were needed. But at last, the question of whether the release of a pre-1972 phonorecord “published” the underlying composition under federal copyright had been put to rest.

To be continued…

Part 29

Z. Z. Top was decided by the Ninth Circuit Court of Appeals, which covered California. The next case in the line of succession came out of Tennessee in 1977, and never went beyond the federal district court. Aubrey Mayhew alleged infringement of 42 of his country-and-western songs, all from the pre-1972 period. This was, to use legal slang, a “blown decision”; almost too odd and convoluted to use for anything. The court briefly considered Rosette, which it denigrated, and Z. Z. Top, which it complemented. But to reach its decision, it turned to a case decided eighteen years earlier and never published in any of the reporters, Leeds Music Corp. v. Gusto Records.

Leeds v. Gusto involved a spoken-word comedy routine by Ray Pinkston entitled “Phone Call from Heaven.” It was apparently a recorded improvisation; Pinkston never prepared a written transcription of the routine, nor submitted one for copyright. Now, this presented a heck of a problem under the 1909 Copyright Act. Performances of dramatic works on phonorecords were covered in subsection 1(d); musical works in the following subsection 1(e). The language in 1(d) made it plain that dramatic performance records, just like musical records, were not copies of the texts from which they were taken.

But unlike music, dramatic performance records didn’t have a mechanical royalty system to compensate authors for the use of their writings. To add insult to injury, if one was in the position of Ray Pinkston, who never copyrighted his text, the fact that a phonorecord was not a copy of the text, but did publish it, meant that if you hadn’t yet released your own record, a bootleg was not only not infringement, but it also threw your work into public domain status.

The Leeds v. Gusto court first tried to deal with the problem by determining that phonorecords were copies. It did this by suggesting that the contrary holding was a creature of Judge Gurfein’s opinion. This was wrong. Judge Gurfein had merely reiterated the holding from the Supreme Court’s old White-Smith v. Apollo decision. Knowing it was shaky ground, the Leeds v. Gusto court dumped this line of reasoning and came up with a more imaginative approach: because Pinkston had never written down “Phone Call from Heaven” in any form, even manuscript, his phonorecord was not a copy, it was an original. What was then distributed, presumably, were hundreds of thousands of originals. Ergo, it was in the public domain.

Returning to Mayhew v. Gusto Records, the court said little more than “Leeds v. Gusto established precedent in the Sixth Circuit, so we have to go with it.” In fact, the court was heavily influenced by the writings of Melville Nimmer, who was highly critical of the Rosette decision, and a strong proponent of the concept that the rights-owners of older records should immediately avail themselves of the opportunity under the new 1976 Copyright Act to sweep their compositions into federal copyright status by submitting copies of their records under PA/PUA status. True, the sound recording aspect was blocked from federal copyright by section 301(c), but the composition could be protected, and filing the phonorecord would start the public domain countdown clock ticking. The alternative for the author of a song on a pre-1972 recording was the prospect of losing copyrights in the composition through a determination that every pre-1972 record ever issued had its composition published. “An author [composer] in permitting records of his to be publicly marketed is certainly engaging in a form of exploitation of his work and should therefore be required to seek protection, if at all, only under the limited monopoly concept of the federal Copyright Act,” Nimmer wrote.

To be continued…