Woods v. Bourne Co.

• Citation: 841 F. Supp. 118
• Decision Date: 10 January 1994
• Docket Number: No. 89 Civ. 3641 (RO).,89 Civ. 3641 (RO).
• Parties: David D. WOODS, Florence L. Woods, Kristine Woods and Benjamin Woods, d/b/a Callicoon Music, Plaintiffs, v. BOURNE CO. and American Society of Composers, Authors and Publishers, Defendants.
• Court: U.S. District Court — Southern District of New York

841 F. Supp. 118

David D. WOODS, Florence L. Woods, Kristine Woods and Benjamin Woods, d/b/a Callicoon Music, Plaintiffs, v. BOURNE CO. and American Society of Composers, Authors and Publishers, Defendants.

No. 89 Civ. 3641 (RO).

United States District Court, S.D. New York.

January 10, 1994.

Deutsch Klagsbrun & Blasband, New York City (David Blasband, Frederick F. Greenman, of counsel), for plaintiffs.

Abeles Clark Osterberg and Prager, New York City (Robert C. Osterberg, of counsel), for defendant Bourne Co.

Bernard Korman, New York City, for defendant American Soc. of Composers, Authors and Publishers.

AMENDED OPINION

OWEN, District Judge.

This action, tried before me without a jury, involves the 1926 hit song "When the Red, Red Robin Comes Bob-Bob-Bobbin' Along", and seeks a declaratory judgment as to who is entitled to 1) certain ASCAP¹ performance royalties² and 2) certain royalties from printed scores during the nineteen-year extension of copyright protection Congress provided in 1976 for a song in its copyright category.³ This requires the Court to define a "derivative" musical work, and specifically a song⁴ under the 1976 Copyright Law amendments,⁵ which is determinative of the issue.

The plaintiffs are the statutory heirs of the composer/lyricist Harry Woods. Defendant Bourne Co. is the publisher of the song, successor to Irving Berlin, Inc., the original publisher in 1926. ASCAP, as a stakeholder, is a nominal defendant.

The background against which the issues must be viewed is as follows. Prior to 1976, a composer of a song was entitled to a maximum term of copyright protection of 56 years consisting of an initial twenty-eight year period with the right to renew for a second twenty-eight years. As to a song then in its renewal period, the Copyright Law amendments of 1976 gave that song a further term of nineteen years of copyright protection (for a total of seventy-five years) with the right to the composer to terminate any agreement with any publisher effective at the end of the fifty-six years, and thereby retake, keep or further exploit all rights in the song as the composer might wish during the additional nineteen years of copyright protection. This was designed to provide additional reward solely to the composer for his or her creativity and to relieve a composer from an ill-advised publishing contract made before a successful piece of music had so demonstrated itself.⁶

Certain exceptions did, however, have to be made to a composer's complete recapture of copyright rights before the nineteen-year extension began. These exceptions were dictated by the nature of the recording, radio, TV, and film industries and their earlier contractually-authorized uses of the composer's work, as well as earlier authorized original creative additions to the material such as by third-party composers and orchestrators. To this end, the statute provides "derivative work" exceptions.⁷

Accordingly, where during the pre-1976 original fifty-six year term of a copyright the work had found its way onto a phonograph record (or cassette or CD), or had been used in a movie, or television show, or had been creatively and with originality rescored for performance by another composer, while the nineteen year extension of copyright rights reverts to the original composer, the statute permits the creator of the "derivative work" as defined, (recording company, film maker, or novel rescorer), the right to continue exploitation of such derivative work during the extension in accordance with the terms of the original grant to such creator. Without this, the writer of the song, upon reversion, could arguably prevent the derivative work from being used at all or demand exorbitant royalties whereas the owner of rights in the derivative work had, conversely, at the time of contracting, the expectation that at the end of 56 years, the song would be free from copyright and in the public domain.

Next, necessary to an understanding of the relatively narrow focus of this case, are the following facts. In order for a song, once written, to get to the public's ears by way of radio, movies, or TV drama,⁸ there are basically two levels involved, each with different publishing and/or licensing agreements, payment methods, and channels to get fees to the publisher and/or composer for the use of the composer's product. Thus, at the first level, to put a song on a record (or on CD) or put it on a movie or TV drama sound track, the recording company, or movie maker or TV producer obtains from the song's publisher the right just to make and sell⁹ the record or just to put the song on the sound track.¹⁰ None of the foregoing, however, authorizes public performance of the song, which is the second level. Thus, a radio station disk jockey cannot broadcast the recording unless that radio station has a license from a performing rights organization covering that composer and publisher (in this case, ASCAP).¹¹ Similarly, the TV station airing the drama must be licensed by ASCAP and, with certain possible exceptions subsequent to 1948 not relevant here, so must a movie theater exhibiting the film.¹² ASCAP then distributes to its member composers and publishers the royalties received from these licensees in accordance with its (ASCAP's) survey of performances of the various pieces in its catalogue during the given period.

Accordingly while during the said nineteen-year extension of the copyright life of the song, a record, CD or film being by definition a "derivative work", such may continue to be sold or exhibited under the terms of the original license with the publisher. However, it is here that the question of whether the music itself is "derivative" becomes crucial. If the version of the music is "derivative," then as to the public performance of the music, the derivative composer's agreement with — license from — the publisher survives for the nineteen-year extension, and ASCAP is to pay the publisher's share to the publisher with such further distribution thereafter, as the contract between the publisher and the composer provides, Mills Music v. Snyder, 469 U.S. 153, 105 S.Ct. 638, 83 L.Ed.2d 556 (1985).¹³ However, if the version of the song used on the record or in the film is not a "derivative work", i.e., it is basically the original composer's original song, then, the publisher's rights thereto having reverted to the composer, ASCAP is to pay royalties for the public performance of any non-derivative version to the composer, or his heirs or assigns during the nineteen-year extension.

Against the foregoing background, the issue the parties tried before me was obviously, "What is a derivative work?" Composer Woods' heirs contend that it means the original "Red, Red, Robin" with such novel, original and creative additions to or variations of its basic music and/or lyrics as to entitle the additions and/or variations to their own copyright protection.

Defendant Bourne, on the other hand contends that everything it ever published is derivative. It premises this on the fact that since its predecessor Irving Berlin, Inc. was given but a "lead sheet" by composer Harry Woods in 1926, that is, just the melodic line with the lyrics written under it, everything that it published thereafter was a "musical arrangement" under 17 U.S.C. § 101, and therefore a "derivative work". This, Bourne argues, includes even the original piano and voice version prepared for sale to the public in 1926 by Irving Berlin, Inc. I find Bourne's position¹⁴ to be wholly contrary to common sense and the realities of the trade. The applicable statute, 17 U.S.C. § 101, reads in relevant part:

A "derivative work" is a work based upon one or more preexisting works, such as a ... musical arrangement, ... motion picture version, sound recording, ... or any other form in which a work may be recast, transformed, or adapted ... A work consisting of ... modifications which, as a whole, represent an original work of authorship is a "derivative work".

This, for present purposes, must also be read in conjunction with § 103(a) and (b), which read as follows:

(a) The subject matter of copyright ... includes ... derivative works,....

. . . . .

(b) The copyright in a ... derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work ...

I reject Bourne's definition of "derivative work" as being anything beyond the lead sheet. Those words, "musical arrangement", cannot be read in a vacuum. They must be read together with the second sentence of § 101 which requires the "modification" to the composition to be an original work of authorship, and together with the entitlement to copyright which is set forth in § 103.¹⁵

Further, Bourne's contention that the piano and voice version Irving Berlin, Inc. made from Woods' lead sheet is a "derivative work" since all Woods supplied it was the melody line and the words, is contrary to the ways of the trade. The lead sheet could not be sold to the public as a piece of sheet music.¹⁶ Perhaps a piano arranger for a few dollars did make a piano version which could be sold to the public. But Bourne's claim that Berlin thereby provided harmonies under the melody, is also contrary to the ways of the trade. Woods' name is not only on the piano-vocal score as its sole creator, but he doubtless played the song for Berlin when he brought it into the firm, and he certainly had to have checked and approved what Bourne put out on the market for the public to buy as his song. It is inconceivable that Woods would have let it go out for sale without assuring himself of this.

Accordingly, the very first piano and voice version that was sold could not possibly be a "musical arrangement" making it a "derivative work" of the lead sheet.¹⁷ In order therefore to qualify as a musically "derivative work", there must be present more than mere cocktail pianist variations of...