Korman v. HBC Florida

• Decision Date: 05 August 1999
• Docket Number: No. 97-5064,97-5064
• Citation: 182 F.3d 1291
• Parties: (11th Cir. 1999) MIMI KORMAN, Plaintiff-Appellant, v. HBC FLORIDA, INC., Defendant-Appellee
• Court: U.S. Court of Appeals — Eleventh Circuit

Page 1291

182 F.3d 1291 (11th Cir. 1999)

MIMI KORMAN, Plaintiff-Appellant, v. HBC FLORIDA, INC., Defendant-Appellee.

No. 97-5064

IN THE UNITED STATES COURT OF APPEALS FOR THE ELEVENTH CIRCUIT

August 5, 1999

Appeal from the United States District Court for the Southern District of Florida D.C. Docket No. 96-648-CV-SM

Before TJOFLAT, BLACK and CARNES, Circuit Judges.

CARNES, Circuit Judge:

Mimi Korman sued HBC Florida, Inc. ("HBC") for copyright infringement. The basis of her complaint was that WQBA-AM ("WQBA"), a radio station owned by HBC, continued to play one of the jingles she had written for it during their business relationship, even after that relationship ended and she insisted that the station stop. The district court granted HBC's motion for summary judgment on the basis of its holdings that: (1) Korman had granted the radio station a nonexclusive license to use the jingle; (2) 17 U.S.C. 203, which governs the termination of exclusive and nonexclusive licenses to use copyrighted material, applies to implied nonexclusive licenses; and (3) 17 U.S.C. 203(a)(3), which allows an author to terminate the grant of a license after 35 years, prevents the termination of licenses of indefinite duration until 35 years have elapsed, regardless of state law. We agree with the first two holdings, but not the third. We therefore reverse the district court's judgment and remand the case for further consideration.

I. FACTS AND PROCEDURAL HISTORY

During the 1970s, Mimi Korman wrote and produced a number of jingles for WQBA, even though she and the station never had any written agreement. In 1978, Korman wrote the lyrics for a jingle entitled "Yo Llevo a Cuba La Voz," which translates as "I Convey the Voice to Cuba." WQBA liked the jingle enough to use it as a station identifier, and it did so with her permission, at least at the time. Neither party remembers how much WQBA paid Korman for this jingle, but they have stipulated that "WQBA paid Korman a fee for her work in writing the lyrics to the Jingle. No royalties or residuals were ever paid to Korman for the Jingle."

In 1979, Korman terminated her relationship with WQBA. Korman argues to us that she told WQBA, either at the beginning of their relationship or during its existence, that the license she was granting it to use her jingles would terminate when she ended her relationship with the station. However, her attorney conceded to the district court that there is no evidence indicating any understanding about the duration of the implied license. We hold her to that concession.

In 1993, Korman heard WQBA playing "Yo Llevo a Cuba La Voz," and left a message for its general manager, saying that the jingle was her property and the station should stop using the jingle unless it was willing to negotiate with her. She never heard from the station. Thereafter, she applied for and received a certificate of copyright registration for the jingle.

In May 1995, Korman again heard the jingle being played by WQBA, and she wrote the station a letter. In her letter, Korman referred to the copyright certificate she had obtained for the jingle, accused the station of violating her copyright in the jingle, and offered to negotiate about the use of that and other jingles, which she had written "on a freelance basis" during her previous relationship with the station. Despite Korman's letter, WQBA continued to play the jingle even though no agreement was reached between the station and Korman. Korman then sued HBC, WQBA's current owner, for copyright infringement.

The district court granted HBC's motion for summary judgment, holding that Korman had granted WQBA a nonexclusive license to use the jingle, and that 17 U.S.C. 203 prevented her from terminating the license until 35 years had elapsed.

II. DISCUSSION

We review a grant of summary judgment de novo, applying the same standard as the district court. See Harbert Int'l, Inc. v. James, 157 F.3d 1271, 1277 (11th Cir. 1998). "Summary judgment is appropriate if the record shows no genuine issue of material fact and that the moving party is entitled to judgment as a matter of law. When deciding whether summary judgment is appropriate, all evidence and reasonable factual inferences drawn therefrom are reviewed in a light most favorable to the non-moving party." Witter v. Delta Air Lines, Inc., 138 F.3d 1366, 1369 (11th Cir. 1998) (quotation and citation omitted).

A. DID KORMAN GRANT WQBA A NONEXCLUSIVE LICENSE?

Initially, Korman challenges the district court's holding that she granted WQBA a nonexclusive license to use the jingle.¹ We reject that challenge. While an exclusive license to use copyrighted material must be written, a nonexclusive license can be granted orally or can be implied from the conduct of the parties. See 17 U.S.C. 204; Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749, 751-52 (11th Cir. 1997). HBC does not contend that Korman orally gave it an explicit license to use the jingle; HBC argues instead that Korman's conduct gave it an implied license.

In Jacob Maxwell, a song had been written for the Miracle, a minor league baseball team. We concluded that an implied, nonexclusive license had been granted because the owner of the copyright, JMI, had allowed the Miracle to play the song at its games. See id. at 752-53. We explained: "JMI cannot reasonably deny, given its subsequent conduct here, that it granted to the Miracle the sort of lesser, nonexclusive license to play the piece during the summer of 1993 that federal law recognizes may result from a purely oral transaction." Id. at 753.

As in Jacob Maxwell, the conduct of the parties in this case establishes that a nonexclusive license was granted. Korman wrote jingles for WQBA for seven years, and during that time she allowed the station to air those jingles, including the one at issue in this case. Given that conduct, she "cannot reasonably deny" that she granted WQBA a nonexclusive license to use her jingle.

B. DOES 17 U.S.C. 203 PREVENT KORMAN FROM TERMINATING THE LICENSE?

After determining that Korman had granted a nonexclusive license to WQBA, the district court decided she could not terminate the license. The court based its decision on two premises: (1) the implied license came within the scope of 17 U.S.C. 203, the termination provision of the Copyright Act; and (2) section 203 prevented Korman from terminating the license for 35 years. We agree with the first premise, but not the second.

1. Does 17 U.S.C. 203 Apply to Implied Nonexclusive Licenses?

17 U.S.C. 203 applies to "the exclusive or nonexclusive grant of a transfer or license of copyright . . . executed by the author on or after January 1, 1978 . . . ." 17 U.S.C. 203(a).² As we have already determined, this case involves a nonexclusive grant of a license. The plain language of section 203 covers all nonexclusive grants of a license that are executed after the specified date, and nothing in the statute excludes those that are implied.

Korman argues that section 203 does not apply to implied licenses because they are not "executed," as required by that provision. They are not executed, she says, because they are not in writing. As a basis for her contention that licenses must be in writing in order to be executed, she points to 17 U.S.C. 204, which states that one of the requirements for a valid transfer of copyright ownership is that the transfer be written. See 17 U.S.C. 204(a). Korman's reliance on section 204 is misplaced, because that provision applies only to transfers of copyright ownership; it has no application to nonexclusive licenses, which do not transfer ownership. See Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1537 n.12 (11th Cir. 1996) (noting that Copyright Act's definition of "transfer of copyright ownership" excludes nonexclusive licenses).

The existence of a writing requirement in section 204 cuts against Korman's position that section 203 only applies to written licenses, because it shows that Congress knows how to impose such a requirement when it wants to do so. Congress did not do so in section 203. "Executed" means "carried into full effect," see Black's Law Dictionary 567 (6th ed. 1990), and nothing in section 203 or elsewhere in the Copyright Act requires that nonexclusive licenses be in writing before they can be carried into full effect.

The nonexclusive license involved in this case went into effect when Korman permitted WQBA to use the jingle notwithstanding the absence of a writing. She did that after January 1, 1978, the date of applicability set out in section 203, so that section does apply to this license. With that holding of the district court we are in full agreement.

2. Where No Termination Date Has Been Specified, Does 17 U.S.C. 203 Prevent Termination of a License Before 35 Years Have Elapsed?

The holding with which we disagree concerns the applicability of section 203 to the grant of a license like the one in this case. The district court held that, unless the parties agree to a shorter duration, section 203 imposes a minimum term of 35 years for copyright licenses. After finding that Korman and WQBA had not agreed to a shorter duration,³ the district court held that section 203 prevented Korman from terminating the license until 35 years had passed. The issue of whether section 203 imposes a minimum term of 35 years on licenses of indefinite duration has caused a split among the other circuits. Compare Walthal v. Rusk, 172 F.3d 481, 484-85 (7th Cir. 1999) (section 203 does not create a minimum term of 35 years for licenses of indefinite duration), with Rano v. Sipa Press, Inc., 987 F.2d 580, 585 (9th Cir. 1993) (section 203 does create a minimum term of 35 years for licenses of indefinite duration). After reviewing the text and legislative history of section 203 and considering the views of the other circuits, we conclude that section 203 does not create a minimum term for licenses of indefinite duration.

Section 203 provides: ...