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October 28, 1999


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][2][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 ...

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