BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal on Friday, December 30, 2011)
To complement our October column in which we focused on termination of rights under copyright in sound recordings, we will focus here on termination of rights under copyright in musical compositions, and particularly on a pending lawsuit in California in which rights in some iconic songs made famous by the Village People are in dispute. They include “Y.M.C.A.” and “In the Navy,” which were co-authored by the group’s lead singer, Victor Willis. Willis maintains that the copyright termination statute should be interpreted literally, which would allow a co-author of a joint work who signed a separate grant, to terminate rights to his own contribution without having a majority of co-authors terminate all rights. Two music publishers maintain that this result would contravene the spirit of the law.
As noted in our last column, the 1976 Copyright Act gave authors and their successors a way to terminate pre-1978 grants under copyright in certain pre-1978 works through Section 304(c). Slightly more than a year from now, a second path will open up under Section 203(a) through which authors and their successors may recapture rights under grants made in 1978 and afterward. The year 2013 is the first during which terminations via the second path become effective and the first in which termination of rights in sound recordings can become effective under either section of the Act.
Although grants of rights in music composed before 1978 have been subject to termination for decades under Section 304, grants of rights in music composed after 1977 become susceptible to termination for the first time in 2013 under Section 203(a), which makes the year noteworthy for this reason, too. And as the Willis case demonstrates, termination of rights in musical compositions also can raise issues.
Termination Is Not Simple
It is not surprising that efforts to terminate rights in valuable compositions like “Y.M.C.A.” and “In the Navy” might give rise to litigation. (Reportedly, each of these songs earns $1 million or more annually.) The rules of termination are detailed and complex both in the Copyright Act and in the implementing regulations. In some respects, those rules are difficult to interpret and in other respects, difficult to apply even when their meaning is clear.
In the latter category, there are numerous examples that relate to terminations under both Sections 304 and 203: Failure of the notice of termination to identify sufficiently the grant that one wishes to terminate, or the copyrighted works to which it relates, can raise issues. So might failure to identify and notify the correct current rights holders, which is not always easy after decades of assignments, licenses, and corporate mergers. Termination of a grant signed by an author since deceased must be effected by the author’s surviving statutory successors who collectively own more than one-half of that author’s termination interest. A span of time may pass before a majority of successors agree to attempt a recovery of rights, and by that time, the statutory time period during which termination must be effected could have expired. Because works for hire are not subject to termination, distinguishing an employee for hire from one who is not, can give rise to disputes. (See our October column.) And because termination only affects U.S. rights, distinguishing domestic revenues from foreign revenues derived from an international grant can raise issues even in the damages phase.
In the proceedings to date in Willis, the issue of work-for-hire status was raised, but the primary focus has been placed not on the application of clear but complex rules but rather on the meaning of a sentence in the statute itself.
The Willis Case
In this action for declaratory relief, two music publishers seek to establish that Willis’s attempt to terminate his grants in 33 compositions is “void and of no force or effect” primarily on the ground that a single author cannot terminate a grantee’s rights in a work of joint authors under Section 203(a). Willis responded with a motion to dismiss (the hearing for which has been continued to January 20). The dispute pits the wording of the statute against what the publishers assert to be its intent.
Willis was the original lead singer of the musical group Village People, which recorded in the 1970s and 1980s, and according to Willis’s submission on his motion, he wrote lyrics to many of the musical compositions recorded by the group including the “classic songs,” “Y.M.C.A.” and “In the Navy.” These two works (among others) were registered in the U.S. Copyright Office with Willis and two co-writers credited with joint authorship of words and music. In other instances, Willis was credited in the registration with co-authorship of the lyrics only.
From 1977 to 1979, Willis assigned his copyright interests in those 33 compositions to one of the plaintiff publishers, which then allegedly transferred rights to the other. Willis was the only signatory to the written assignments he signed. The other joint authors transferred their rights in separate instruments. In early 2011, Willis served notices of termination on the publishers under Section 203(a) with respect to his assignments of rights in those 33 compositions.
The publishers are seeking to defeat Willis’s motion principally on the basis that he was one of several joint authors whose joint work was “a unitary whole.” Accordingly, they argue that a grant conveying rights in “joint works written by more than one person” cannot be terminated by a single joint author: “simply because [Willis] signed documents different from the ones signed by the other authors of the same joint works, [he] is neither the sole grantor nor only author of any of the [musical compositions] and hence, he is not a ‘majority of authors.'”
Willis’s response is rather simple: he relies on the fact that each of the grants he wishes to terminate names him alone as the grantor. Any co-authors involved in writing the compositions may have made their own songwriter agreements (as the publishers contend), but no one other than Willis executed the grants that Willis is attempting to terminate. Section 203(a)(1) of the Copyright Act says, “In the case of a grant executed by one author, termination of the grant may be effected by that author…” (emphasis added). There is no mention in this sentence of any other authors who may have co-created a joint work; the focus is on the one who signed the grant being terminated. A subsequent sentence applies to “a grant executed by two or more authors of a joint work” (emphasis added) – which does not describe the grants that Willis signed. Only in that instance does the law require that “termination of the grant … be effected by a majority of the authors who executed it…”
Willis observes in his motion papers that “the operative words of the entire Section 203 relating to the termination provisions are ‘the grant’ and not ‘joint authors’ or ‘collective grants’ ‘or’ ‘several grants’ or similar terms that denote plural grants, no matter how much [the publishers] may try to justify their argument.” He argues that under Section 203(a), “it is the majority of the authors who executed the grant being terminated, rather than the majority of the authors who wrote the work, that is the requirement for a valid notice of termination” (emphasis added). Willis concludes that in the case of each grant being terminated, he was the only joint author who executed it and the only one needed to terminate it.
Two of the most interesting issues raised on the motion concern the “true purpose” of the termination provisions as they relate to works of joint authorship and the challenge of identifying precisely what rights under copyright would revert to Willis if his notices of termination in a joint work are effective.
On the first point, the publishers invoke the primacy of substance over form, arguing that the “mere circumstance” that co-authors of 33 joint works “happened to execute separate granting documents” should not dictate the outcome. Rather, according to the publishers, “the clear purpose and policy” of the 1976 termination provisions was “to make termination only available to a majority decision where joint works are concerned” (emphasis added). Willis responds that this argument would “turn the statute on its head” because the “true purposes” of the termination provisions were “to protect authors’ rights.” Citing legislative history, Willis argues that “the purpose of enacting the termination provisions was to protect authors by providing an opportunity to re-market their works once the true value of such works had been established.” And further addressing “substance,” Willis contends that it would be a “strained interpretation” of the word “grant” to mean “various separate grants of each co-author entered into at different times with various different grantees” – which would be “wholly inconsistent and unworkable with the related provisions of the Copyright Act and implementing Regulations.” They “clearly contemplate the termination of a specific grant.”
On the second point, the publishers say that if the effect of Willis’s notice is to recover “‘his interest,’ i.e., whatever he granted in the first place,” then there exists a “substantial factual issue…that cannot be determined” on a motion to dismiss. They contend: “Whatever [Willis’s] actual contribution to each song may [have] been, it was by law undivided and cannot be carved out in order to be terminated unilaterally – he must have with him a majority of his co-authors.”
This issue lies at the core of the dispute, but the precise question is not necessarily whether Willis’s contribution to each song can be surgically removed. With respect to jointly-written lyrics in particular, there is no practical way to tweeze out one writer’s contribution and proceed with the remainder – either for Willis (and his recaptured contribution, if he succeeds) or for the publishers (with the balance of the composition). If Willis prevails, the publishers’ rights to the music with lyrics or the lyrics alone (depending on whether Willis’s joint interest applies only to the lyrics or to the entire composition) would become non-exclusive unless and until Willis and the publishers enter into a new deal or all of the co-authors’ grants relating to a particular composition are successfully terminated.
Given complex copyright termination provisions and a myriad of potential fact patterns that might be used to challenge compliance, disputes like Willis will continue to be worth following.
NOTE: By a decision dated May 7, 2012, Willis’s motion to dismiss the complaint was granted.
 Although termination of grants under Section 203(a) applies to all types of copyrighted works, our October column focused on termination of rights in sound recordings because of an unresolved issue that may substantially affect the fortunes of record companies on the one hand or performers of classic recordings on the other: whether or not sound recordings first released on albums qualify as works for hire under the Copyright Act. The answer in many cases may depend on individual circumstances, but if a sound recording is deemed a work for hire, then grants of rights under copyright in that recording cannot be terminated because works for hire are exempt from the termination mechanism. If a sound recording is ineligible for work for hire status, then a grant of rights in it may be eligible for termination.
 Scorpio Music (Black Scorpio) S.A. and Can’t Stop Productions, Inc. v. Victor Willis, U.S.D.C., S.D. cal., Case No. 3: -CV- 01557-BTM-RBB (2011).
 17 U.S.C. §304(c) was enacted in 1976; §304(d), which provides a second termination window for certain works, became law in 1998.
 17 U.S.C. §203(a) became law in 1976.
 Although §203(a) became effective in 1978, an effective date of termination under that section can occur no sooner than the 35th anniversary of the grant. Accordingly, grants made in 1978 are subject to effective dates of termination in 2013.
 Pre-1978 grants of rights in sound recordings under §304(c) will not be terminable until at least 2028, the 56th year after 1972 – which is the year in which sound recordings first became protected under copyright in the United States.
 Rohter, Larry, “A Village Person Tests the Copyright Law,” New York Times, August 16, 2011.
 37 C.F.R. §201.10.
 In their complaint, the publishers allege that Willis was a “writer for hire,” thereby placing his works-made-for-hire beyond the reach of the termination statute. Willis responds that the grants he signed contain no work-for-hire language and are expressed instead in the language of “transfer and conveyance”; and further, the copyright registrations do not refer to work-for-hire status. The publishers did not oppose that part of Willis’s motion to dismiss.