BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, February 27, 2004.)
The U.S. District Court for the Southern District has dismissed the claims brought by Connie Francis arising out of the allegedly improper synchronization of her songs in two motion pictures.1 The decision also dismisses certain of her royalty claims because they were foreclosed by the incontestability clauses in her various record agreements.
During the 1950’s and 1960’s, when Francis had achieved great fame as a recording artist, she entered into numerous contracts with the predecessors in interest to Universal Music Group (“UMG”). Under those agreements, Francis specifically reserved rights with respect to the use of her music in commercials and the timing of initial releases. UMG was to pay semi-annual royalties, and Francis had the right to object to same and conduct audits to determine their correctness, provided that she gave notice of her objections within a contractually defined review period. Early contracts provided for a review period of six months; later ones extended the period to one and then two years. If Francis failed to object to the royalty payments prior to the end of the review period, she was contractually foreclosed under so-called “incontestability clauses” from seeking royalties for the covered periods.
In 1974, Francis was raped and tortured. Since then, she has suffered from ongoing mental impairments that developed as a result of her traumatic experience, including drug dependencies and suicide attempts. Francis brought suit alleging that UMG took advantage of her condition and stopped paying royalties.
In the 1990’s, UMG licensed synchronization rights allowing Francis’s music to be used in the films “Jawbreaker” and “Postcards from America.” The films feature scenes of homosexuality, suicide, prostitution and rape, all of which Francis found objectionable. In addition to her claim for royalties, Francis seeks damages for violation of moral rights under foreign law, intentional infliction of emotional distress, breach of the duty of good faith and fair dealing, and civil rights claims.
On November 27, 2002, a Magistrate issued a memorandum and order refusing to compel UMG to produce documents relating to royalties for any period prior to July 1, 1995, because royalty claims for such periods were foreclosed by the incontestability clauses in the various agreements between Francis and UMG. Francis objected to that order and appealed. UMG opposed the appeal and moved for summary judgment dismissing Francis’s royalty claims as well as those claims arising out of the allegedly improper synchronization of her songs in the motion pictures.
In discussing Francis’s wrongful synchronization claims, the Court cites the provision in each of the contracts between Francis and UMG which grants UMG “the exclusive right to all the products of [Francis’s] services hereunder, including, but not limited to the exclusive right . . . to . . . license or otherwise use or dispose of, in any or all fields of use, and by any method now or hereafter known, throughout the world, phonograph records and other reproductions embodying the performances to be recorded hereunder, upon such terms and conditions as we may elect, or, at our discretion, to refrain therefrom.”
Under this provision UMG, as owner of the recordings, was free to license same, absent any contractual restrictions to the contrary. The three contractual limitations on UMG’s rights are with regard to direct endorsements for advertising purposes, coupling of Francis’s songs on compilation records and the timing of the initial releases of the songs on recordings. None of these restrictions limit the ability of UMG to issue synchronization licenses for Francis’s songs. Citing Greenfield v. Philles Records, Inc.,2 in which the transfer by The Ronettes to their record producer of full ownership rights to their master recordings was held to carry with it, in the absence of any contractual reservation of rights, the unconditional right to redistribute those performances in any technological format, the Court holds that as a matter of law, the failure by Francis to limit or restrict the right of UMG to issue synchronization licenses entitles UMG to issue them.
The Court next examines the non-contractual claims asserted by Francis, which essentially allege “wrongful synchronization.” The first is a moral rights claim for improper synchronization. The Court indicates that the United States only recognizes moral rights claims as to visual arts that have been altered or deformed. It does not recognize moral rights with respect to vocal performances. As to the allegation by Francis that under unidentified foreign laws, her moral rights have been violated, the Court questions how UMG could be liable under foreign law for licensing songs to film distributors, not parties to this action, who in turn distributed the films into foreign markets. Because the dispute here centers on a U.S. contract entered into between parties from Florida (Francis) and California and New York (UMG), the “interest analysis” test employed by New York law in choice of law analysis looks to the law of jurisdiction having the greatest interest in the litigation. The significant contacts are generally the domiciles of the parties and the locus of the tort. Because UMG undertook no actions in foreign countries with respect to Francis’s music, under these circumstances, UMG is not subject to foreign laws, including foreign moral rights laws.
Furthermore, at oral argument, counsel for Francis conceded that her songs were not altered nor deformed when they appeared in the films, but argued that the mere appearance therein was enough to distort them and become subject to a moral rights claim. The Court states that recognition of such a claim would subject everyone who issues a synchronization license to potential liability under foreign law or would grant veto power over licenses to those, like Francis, who transferred their rights without reservation. Such an outcome would be totally contrary to the language of the contracts between Francis and UMG and would be contrary to the decision in Greenfield noted above.
The decision deals quickly with plaintiff’s claim for intentional infliction of emotional distress by indicating that UMG did not act extremely or outrageously, but in conformity with its contract. When the defendant has a proper business motive for its actions, a claim for intentional infliction of emotional distress will not lie.
The Court also dismisses Francis’s claim under New York Civil Rights Law Section 51 which prohibits the use of a person’s name, picture or likeness for purposes of trade without written consent. First, Francis did give consent in her contract with UMG. Second, the Court states that Section 51 contains an express provision stating that it does not “prevent any person, firm or corporation . . . from using the name, portrait, picture or voice of any author, composer or artist in connection with his literary, musical or artistic productions which he has sold or disposed of with such name, portrait, picture or voice used in connection therewith.” Having transferred her rights and her vocal recordings to UMG, Francis is precluded from bringing a Section 51 claim when UMG licensed her recordings, properly attributed to her, for use in films.
Francis also claims that UMG breached an implied covenant of good faith and fair dealing because it improperly coupled her performances with those of other artists on compilation albums, thereby reducing her royalties, and that UMG also failed to adequately police bootlegging of her recordings. With regard to the latter claim, the contract is silent as to bootlegging, and it is fundamental that implied covenants can not be asserted to create new contractual obligations.
The Court indicates that one of the issues which remains after the decision in this case relates to improper coupling. The issue is whether UMG had the right to couple under the 1982 contract. If it did, there can be no breach of implied duties for such coupling. If it did not, a breach of contract claim will lie and would foreclose any claim for breach of implied covenant on that subject.
Finally, the Court addresses the claim by Francis that UMG either under-reported or failed to report royalties. Under the incontestability clauses, Francis was allowed certain limited time periods to review and contest the royalty statements. After the expiration of that review period, she was bound by those statements because the incontestability clauses acted as a time bar to any claims made after the agreed upon review period. The Magistrate recognized that Francis does not claim that the contractual language was unclear, nor that it was obtained by duress or fraud or overreaching, nor that any of the contractual periods were unreasonably short. Accordingly, she enforced the two-year review period and refused to compel production of documents supporting royalty statements for any period prior to July 1, 1995. The Court affirms that conclusion and grants UMG’s further motion for summary judgment, dismissing Francis’s claims as being time-barred to the extent they pre-date July 1, 1995.
Accordingly, the Court affirms the Magistrate’s ruling and grants UMG’s motion in its entirety.
1 Franconero v. Universal Music Corp. 2003 WL 90060 (S.D.N.Y.) (December 19, 2003)
2 750 N.Y.S.2d 565 (N.Y. 2002)