477 F.3d 383 (6th Cir. 2007), 05-6824, Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC

Docket Nº:05-6824, 05-6880.
Citation:477 F.3d 383, 81 U.S.P.Q.2d 1652
Party Name:ROGER MILLER MUSIC, INC., and Mary A. Miller, Plaintiffs-Appellants/Cross-Appellees, v. SONY/ATV PUBLISHING, LLC, Defendant-Appellee/Cross-Appellant.
Case Date:February 13, 2007
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit
 
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477 F.3d 383 (6th Cir. 2007)

81 U.S.P.Q.2d 1652

ROGER MILLER MUSIC, INC., and Mary A. Miller, Plaintiffs-Appellants/Cross-Appellees,

v.

SONY/ATV PUBLISHING, LLC, Defendant-Appellee/Cross-Appellant.

Nos. 05-6824, 05-6880.

United States Court of Appeals, Sixth Circuit.

Feb. 13, 2007

Argued: Nov. 28, 2006.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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ARGUED:

W. Robert Thompson, Kay, Griffin, Enkema & Brothers, Nashville, Tennessee, for Appellants.

Barry I. Slotnick, Loeb & Loeb, New York, New York, for Appellee.

ON BRIEF:

W. Robert Thompson, John J. Griffin, Jr., Caroline M. Gobbell, Kay, Griffin, Enkema & Brothers, Nashville, Tennessee, for Appellants.

Barry I. Slotnick, Loeb & Loeb, New York, New York, for Appellee.

Before: COLE and McKEAGUE, Circuit Judges; BREEN, District Judge. [*]

OPINION

R. GUY COLE, JR., Circuit Judge.

Plaintiffs-Appellants Mary Arnold Miller and Roger Miller Music, Inc. (the "Appellants") brought this copyright-infringement-and-ownership action against Defendant-Appellee Sony/ATV Publishing, LLC ("Sony"). Mary Miller is the wife of the late Roger Miller, a renowned country-music singer and songwriter, and Roger Miller Music, Inc. ("RMMI") is an assignee. Sony is the successor-in-interest to Tree Publishing Co., Inc. ("Tree"), the publishing company Miller contracted with from 1958 until his death in 1992. In their motion for summary judgment before the district court, Appellants asserted numerous claims: (1) Appellants are the legal owners of the renewal copyrights in Miller's 1958-1963 and 1964 songs; (2) Sony is not a beneficial owner of the renewal copyrights in the 1964 songs; and (3) Sony is liable for copyright infringement because it does not have an implied, non-exclusive license to exploit those songs. Sony filed a motion for judgment on the pleadings asserting that (1) Appellants' ownership and infringement claims were untimely; (2) Sony owns the renewal copyrights in the 1958-1963 songs; (3) Sony is a beneficial owner of the renewal copyrights in the 1964 songs; and (4) Sony is not liable for copyright infringement because it has an implied, non-exclusive license in Miller's songs. For the following reasons, we AFFIRM the district court's ruling that (1) Sony is the owner of the renewal copyrights in Miller's 1958-1963 songs; (2) Appellants' ownership claims are timely; and (3) Appellants' infringement claims are timely for Sony's conduct between December 21, 2001, and December 21, 2004. Further, we REVERSE the district court's ruling that Sony's statements regarding Appellants' ownership of the renewal copyrights in the 1964 songs were judicial admissions and REMAND for a determination as to whether the district court can hear Sony's argument that it owns the renewal copyrights in Miller's 1964 songs.

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I. BACKGROUND

A. Factual History

Roger Miller was a famous country-music singer and songwriter who died on October 25, 1992. In 1958, 1960, and 1962, Miller and Tree (Sony's predecessor) executed publishing agreements that conveyed the original copyrights in Miller's songs to Tree. The 1958, 1960, and 1962 publishing agreements all provide, in relevant part, as follows:

1. [Miller] hereby sell[s], assign[s], tranfer[s] and deliver[s] to [Tree] all musical compositions heretofore written and/or composed by [Miller] ... and [Miller] hereby agree[s] to sell, assign, transfer and deliver to [Tree] all musical compositions which [Miller] shall hereafter write during the term of this contract and any extensions and renewals hereof.

2. All rights in and to music and/or lyrics for musical compositions as soon as conceived, composed and/or written by [Miller] during the term of this agreement and any extensions and renewals hereof shall immediately be vested in [Tree] together with the right to copyright the same throughout the world.

(Joint Appendix "JA" 32, 146, 249.) In exchange for the assignment of the copyrights in his songs, Miller was entitled to royalty payments. The 1991 agreement was the final agreement executed between Miller and Tree before Miller's death. That agreement provided, in relevant part, as follows:

Tree shall have the sole and exclusive right to exercise and authorize others to exercise all rights and interests in and to Said Works, throughout the world and in perpetuity, including under all copyrights therein....

(JA 487.)

The 1958, 1960, and 1962 agreements required that Miller and Tree execute a separate agreement, entitled "Exhibit A," each time Miller delivered a song to Tree:

6. As each completed musical composition is delivered to [Tree], [Miller] and [Tree] are to execute a separate agreement with respect to each such work in the printed form hereto annexed and marked "Exhibit A" ... and both [Miller] and [Tree] are to be bound by the terms, covenants and conditions of said agreements as if herein fully set forth.

(JA 33, 146, 249.) The Exhibit A agreement contains language indicating that Miller transferred to Tree, not only the original copyrights in his songs, but the renewal copyrights as well:

2. [Miller] hereby sell[s], assign[s], transfer[s], and set[s] over unto [Tree] its successors and assign[ees], the said musical composition (lyrics, music and title) and each and every arrangement thereof, together with the world-wide copyright thereof, and the right to secure copyright therein for the entire world, with all of their right, title, and interest, both legal and equitable therein ... and all other rights now known or hereafter to come into existence.

5. [Miller] hereby authorize[s] and empower[s] [Tree] to renew, pursuant to law, for and in the name of [Miller], if living, the copyright of the said musical composition, and to execute and deliver in the name of the composers a formal assignment of each renewal copyright to [Tree], for its own use and benefit subject to the payment of the same royalties as hereinbefore provided.

(JA 447-48) (emphasis added). Although the parties agreed in the publishing agreements to execute an Exhibit A agreement

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each time Miller delivered a new song to Tree, an Exhibit A agreement was never executed for any of Miller's songs. In 1969, the parties agreed to waive the requirement, in the prior publishing agreements, that an Exhibit A agreement be executed for each song:

As a matter of convenience for the parties the signing of separate agreements is hereby waived, and the terms and conditions as to royalties and the payment thereof shall be deemed part of the main agreement and shall be made a part thereof.

(JA 446.)

The renewal copyright of a work is the sixty-seven-year period that begins once the original copyright term of twenty-eight years expires. 17 U.S.C. § 304(a)(1)(A). It is undisputed that Miller transferred the copyrights in his songs, for the original copyright term, to Tree, and later to Sony. However, because renewal copyrights can be transferred independently of the original copyright term, the parties' dispute is over ownership of the renewal copyrights in Miller's 1958-1963 songs and 1964 songs. Miller's 1958-1963 songs were protected for an original copyright term of twenty-eight years and the copyrights were renewed prior to his death. Miller's 1964 songs also had an original copyright term of twenty-eight years but the renewal term did not begin until after Miller's death; the renewal copyright term began on January 1, 1993.

B. Procedural History

Appellants filed the present action in the district court for the Middle District of Tennessee on December 21, 2004. Appellants filed a motion for summary judgment, arguing that they owned the renewal copyrights in the songs published under the 1958, 1960, and 1962 publishing agreements. Further, Appellants claimed that Sony was liable for copyright infringement because Sony did not have an implied, non-exclusive license in Miller's songs. Sony filed a motion for judgment on the pleadings, contending that (1) Appellants' ownership and infringement claims were time-barred; (2) Miller assigned his renewal copyrights to Sony for the 1958-1963 songs, and therefore Sony is the owner of those copyrights; and (3) alternatively, if Sony lacked an ownership interest in the songs, it was nonetheless not liable for infringement because Sony had an implied, non-exclusive license in Miller's songs.

On July 11, 2005, the district court concluded that Sony was the owner of the renewal copyrights in the 1958-1963 songs because Miller validly assigned his interest to the...

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