The opinion of the court was delivered by: Stanley S. Harris, District Judge.
Before the Court are defendant's motion for summary judgment,
plaintiff's opposition thereto, defendant's reply, and
supplemental filings in support of and in opposition to the
motion. Upon consideration of the entire record, defendant's
motion for summary judgment is granted in part and denied in
part. "Findings of fact and conclusions of law are unnecessary on
decisions of motions under Rule 12 or 56. . . ." Fed.R.Civ.P.
52(a); Summers v. Department of Justice, 140 F.3d 1077, 1079-80
(D.C.Cir. 1998). Nonetheless, the Court sets forth its reasoning.
Summary judgment may be granted only if the pleadings and
evidence "show that there is no genuine issue as to any material
fact and that the moving party is entitled to a judgment as a
matter of law." Fed.R.Civ.P. 56(c). In considering a motion for
summary judgment, all evidence and the inferences to be drawn
from it must be considered in the light most favorable to the
non-moving party. See Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538
(1986). Mere allegations in the pleadings, however, are not
sufficient to defeat a summary judgment motion; if the moving
party shows that there is an absence of evidence to support the
non-moving party's case, the non-moving party must come forward
with specific facts showing that there is a genuine issue for
trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 327, 106
S.Ct. 2548, 91 L.Ed.2d 265 (1986).
Defendant Real Authentic Sound ("RAS"), a record company, paid
Harold McLarty, a record producer, to produce a new album
re-recording with new music original lyrics from a
previously-released album entitled Mi Name Tiger. RAS and
McLarty allegedly agreed that McLarty was to be solely
responsible for acquiring the necessary rights from all artists
and for providing RAS with a master tape of the recording.
McLarty originally approached Raymond Tilkens, a musician, to
compose the new music for the album. Tilkens wrote the music for
one song — Mi Name Tiger — but was unable to complete the
project. Tilkens introduced plaintiff Reginald Staggers, also a
musician, to McLarty. Plaintiff and McLarty subsequently
contracted to have plaintiff write and arrange the music for the
ten remaining songs needed for completion of the album. As part
of their agreement, plaintiff was to retain "all Copyrights and
Publishing to the music of the aforementioned compositions."
Compl., Ex. B, ¶ 4. Plaintiff subsequently wrote, arranged, and
performed the musical compositions and delivered the master tape
to McLarty for the following songs: (1) I Tiger; (2) No Wanga
Gut; (3) Progress; (4) Move Up; (5) Mi Lover Mi Lover, (6)
Don't Be Greedy; (7) No Lef Ya So; (8) Man and Woman; (9)
The Works; (10) Bonner Pen Rock; and (11) No Puppy
Love.*fn1 McLarty subsequently gave the master tape to RAS. RAS
went on to manufacture and distribute an album entitled New
Brand Style, containing these eleven songs as well as the song
written by Tilkens.
Plaintiff's complaint contains several claims. Plaintiff brings
these claims under the Copyright Act of 1976, as amended,
17 U.S.C. § 101-1101 (1994 & Supp. 1999), and invokes this Court's
jurisdiction under 28 U.S.C. § 1338(a) & (b). First, plaintiff
claims that RAS knowingly infringed his copyrights by publishing
and placing on the market the New Brand Style album containing
plaintiff's musical compositions "without obtaining Plaintiff's
right to use his performances or by paying the appropriate
royalties for use of the Compositions." Compl., ¶ 16. This
allegation is rather vague and potentially refers to two separate
claims: (1) that RAS infringed plaintiff's alleged copyright in
the sound recording of the New Brand Style album; and (2) that
RAS infringed plaintiff's alleged copyrights in the twelve songs
on the New Brand Style album.*fn2 Second, plaintiff claims
that RAS knowingly signed licenses to reproduce plaintiff's music
outside of the United States in violation of the license
agreements. Third, plaintiff claims that RAS breached the license
agreements by not making adequate royalty payments to plaintiff
for the albums that RAS manufactured, distributed, and sold. The
Court treats this claim as a contract claim, although plaintiff's
complaint improperly labels it a copyright claim.*fn3
Defendant's motion for summary judgment is granted with respect
to plaintiff's claims that RAS infringed plaintiff's copyrights
by: (1) publishing the eleven songs written by plaintiff during
the time period that it held a license to do so; and (2)
publishing the song Mi Name Tiger. The motion is also granted
with respect to plaintiff's claim that RAS violated the parties'
license agreements by granting foreign companies the right to
reproduce the New Brand Style sound recording. The motion is
denied without prejudice with respect to plaintiff's claims that
defendant: (1) infringed plaintiff's alleged copyright in the
sound recording of the New Brand Style album; (2) infringed
plaintiff's copyrights in his musical compositions by
distributing the New Brand Style album outside of the United
States; and (3) breached the license agreements by not paying
plaintiff adequate royalties.
Protection given to copyrights is entirely statutory and is set
forth in 17 U.S.C. § 106. See Sony Corp. of America v. Universal
City Studios, Inc., 464 U.S.
417, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Such protection is
limited to exclusive rights held by a copyright owner.*fn4 See
Stewart v. Abend, 495 U.S. 207, 220, 110 S.Ct. 1750, 109 L.Ed.2d
184 (1990). In order to prevail in a copyright infringement
action, a plaintiff must show two elements: First, that he is the
rightful owner of the copyright at issue, and second, that the
defendant infringed his copyright. See Feist Publications, Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113
L.Ed.2d 358 (1991); Stenograph L.L.C. v. Bossard Assocs., Inc.,
144 F.3d 96, 99 (D.C.Cir. 1998); Nelson v. Grisham, 942 F. Supp. 649,
651 (D.D.C. 1996).
A. Whether RAS Infringed Plaintiff's Copyrights By Publishing
and Placing On the Market the New Brand Style Album
Copyright protection extends to two distinct aspects of music:
(1) the musical composition, which is itself usually composed of
two distinct aspects — music and lyrics; and (2) the physical
embodiment of a particular performance of the musical
composition, usually in the form of a master recording. 5
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 24.01
(1999). See also 17 U.S.C. § 102(a) (1994) (stating that
copyright protection extends to "original works of authorship,"
which include "musical works" and "sound recordings."); BTE v.
Bonnecaze, 43 F. Supp.2d 619, 627 (E.D.La. 1999) ("Sound
recordings and the underlying musical compositions are separate
works with their own copyrights."); T.B. Harms Co. v. Jem
Records, Inc., 655 F. Supp. 1575, 1576 n. 1 (D.N.J. 1987) ("When
a copyrighted song is recorded on a phonorecord, there are two
separate copyrights: one in the musical composition and the other
in the sound recording."). Plaintiff claims to own both the
copyrights in the musical compositions included on the New Brand
Style album, as well as the copyright in the New Brand Style
sound recording itself.*fn5 As a result, plaintiff claims that
RAS's publishing and placing on the market of the New Brand
Style album infringed both sets of copyrights.
1. Whether RAS Infringed Plaintiff's Alleged Copyright in the
Sound Recording of the New Brand Style Album
As discussed above, plaintiff claims to own the copyright in
the New Brand Style sound recording, and therefore argues that
RAS's use of it constitutes infringement.*fn6 However, defendant
claims that, through McLarty, it owns the copyright to the sound
recording, and therefore its use of the recording could not
constitute infringement. Defendant has not provided the Court
with sufficient information to decide, as a matter of law, that
it alone owns the New Brand Style sound recording. Accordingly,
its motion for summary judgment
is denied without prejudice as it relates to this issue.
The Copyright Act provides that copyright ownership in a work
"vests initially in the author or authors of the work."
17 U.S.C. § 201(a) (1994); Community for Creative Non-Violence v. Reid,
490 U.S. 730, 737, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989).
Generally, the author of a work is the person who "actually
creates the work, that is, the person who translates an idea into
a fixed, tangible expression entitled to copyright protection."
Id. There is an exception to this general rule applicable to
"works made for hire." In the case of a work made for hire,
unless there is a written agreement to the contrary, the author
of the copyright is not the person who actually creates the work,
but the employer or other person for whom the work was prepared.
17 U.S.C. § 201(b) (1994); Community for Creative Non-Violence,
490 U.S. at 737, 109 S.Ct. 2166; Roeslin v. District of
Columbia, 921 F. Supp. 793, 797 (D.D.C. 1995). It is also
possible for a work to have joint authors if the work was
"prepared by two or more authors with the intention that their
contributions be merged into inseparable or interdependent parts
of a unitary whole." 17 U.S.C. § 101 (1994 & Supp. 1999). Joint
authors are co-owners of the copyright in a work.
17 U.S.C. § 201(a) (1994).
In order to determine whether RAS or Staggers owns the New
Brand Style sound recording, the Court must decide: (1) whether
McLarty or Staggers, or both jointly, created the sound
recording; (2) if Staggers created the sound recording, whether
it was prepared for McLarty as a work made for hire; and (3) the
effect of the contract between McLarty and Staggers on ownership
of the recording. Neither RAS nor Staggers claims to have
registered a copyright in the New Brand Style sound recording
with the Copyright Office; thus, neither party may benefit from
the presumption that it owns the copyright. See
17 U.S.C. § 410(c) (1994) ("In any judicial proceedings the certificate of a
registration . . . shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the
certificate."); Stenograph L.L.C., 144 F.3d at 99; Hart v.
Sampley, 1992 WL 336496, *1 (D.D.C. 1992). See also Ballas v.
Tedesco, 41 F. Supp.2d 531, 538 (D.N.J. 1999).
RAS argues that it is the owner of the copyright because: (1)
plaintiff did not perform the music on the album in any
traditional sense, as he created the music on his computer; and
(2) McLarty, as producer of the album, paid for the studio time,
the tapes, and all other aspects of the recording and
manufacturing of the sound recording.*fn7 RAS has not
established as a matter of law that McLarty, and McLarty alone,
created the recording. First, RAS does not explain why Staggers's
use of a
computer to create the music for the recording makes it any less
a "performance" than if he had used some other, more traditional
instrument.*fn8 Second, paying for the recording, without more,
is not sufficient to establish McLarty's authorship of the
recording. See Forward v. Thorogood, 985 F.2d 604, 605-606 (1st
Cir. 1993) (finding that plaintiff was not joint author of sound
recording where he had arranged and paid for the recording
session and requested that specific songs be recorded, but did
not make any musical or artistic contribution to the recording,
such as serving as the engineer or directing the manner in which
the songs were played or sung). See also 1 Nimmer, supra, §
2.10[A][b] ("If the act of `setting up the recording session'
were the record producer's only basis for claiming original
contribution to the recording, and hence `authorship,' it would
be ill-based indeed. This is no more an act of `authorship' than
is the act of one who makes available to a writer a room, a
stenographer, a typewriter, and paper.").
It is not clear from the facts pleaded thus far how much
involvement McLarty had in creating the New Brand Style sound
recording. While it is undisputed that McLarty created the
original concept for the album, hired Staggers to write, arrange,
and perform the music, and paid for the studio time, this may not
be sufficient to establish either his sole or joint authorship of
the sound recording. See, e.g., Forward, 985 F.2d at 605-606;
Ballas, 41 F. Supp.2d at 540 (finding that plaintiff was not
joint author of the sound recording where his only contribution
to the sound recording was the original idea). But cf. Shaab v.
Kleindienst, 345 F. Supp. 589, 590 (D.D.C. 1972) (stating that
providing the equipment and organizing the diverse talents of
arrangers, performers, and technicians, are activities satisfying
the 1909 Copyright Act's requirements of authorship); H.R.Rep.
No. 94-1476 at 56 (1976), reprinted in 1976 ...