Update On Copyright Issues

Two recent federal circuit court decisions have potentially turned copyright co-ownership upside down, affecting any writer who collaborates.

First, in the 2007 case of Davis v. Blige, the Second Circuit undermined fundamental co-ownership of copyright principles.  Although the case involved songwriting, the effects could extend to any industry – including publishing — where there are jointly owned copyrighted works.  Davis involved two songs recorded by singer Mary J. Blige.  The plaintiff, Sharice Davis, co-wrote the songs with Bruce Chambliss.  Davis claimed Blige and her business associates were aware of these songs and that two tracks on Blige’s triple platinum 2001 album, “No More Drama,” infringed on Davis’ rights in these songs.  Six months after Davis sued for copyright infringement, however, Chambliss assigned his rights in the songs to Blige’s brother — one of the defendants in the suit. The brother then licensed it non-exclusively to the other defendants.  Chambliss’ assignment was retroactive to the dates of the songs’ creation, which made defendants’ use of the songs non-infringing.

This “retroactive” licensing tactic occurs all the time in the publishing and music industries – rather than fight an infringement battle, the defendant agrees to license disputed material. Because the U.S. copyright statute states that co-authors own equal, undivided interests in a copyrighted work, and that each co-author can use or nonexclusively license the work (subject only to an obligation to account to the other co-author for any profits received) the Chambliss license should have ended Davis’ infringement suit.  But the Second Circuit, seemingly contrary to the clear language of the statute, held that: one co-author cannot transfer his or her ownership rights in the work without ALL the other co-authors’ permission; and retroactive licenses and transfers are invalid!

This strange decision, although not binding upon other federal circuits, is important because the Second Circuit includes New York – traditional home of the publishing industry – and its opinions on copyright law are generally given great weight by other circuits.

Next, in the 2008 decision of Sybersound Records v. UAV Corp., the Ninth Circuit ruled that the transfer of an interest in a divisible copyright from a co-owner, without a like transfer from the other co-owners, is not an assignment or exclusive license that gives a co-ownership interest to the transferee.  PLAIN ENGLISH TRANSLATION:  If your co-owned copyright interest came through an assignment from someone who was themselves a co-owner, rather than arising as a result of joint authorship, then you may not own the copyright interest that you thought you did.

As in the Blige, case, the Sybersound court’s reasoning is convoluted, but its implication that copyright co-owners cannot freely transfer their rights presents a business impossibility for those in the publishing, film, music, or software industries who routinely deal in the transfers of co-owned and subdivided interests in copyrights.  Again, although the 9th Circuit decision is not binding on other federal circuits, the Ninth Circuit includes California, home of Hollywood and the film industry.  Hopefully, the Court will clarify its decision in the future.

© 2009 Daniel Steven