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…