Everly v. Everly

• Decision Date: 04 May 2020
• Docket Number: No. 19-5150,19-5150
• Parties: Isaac Donald EVERLY, Plaintiff-Appellee, v. Patrice Y. EVERLY; Phillip J. Everly; Christopher Everly; Phillip Everly Family Trust; Everly and Sons Music, (BMI), Defendants-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

958 F.3d 442

Isaac Donald EVERLY, Plaintiff-Appellee,

v.Patrice Y. EVERLY; Phillip J. Everly; Christopher Everly; Phillip Everly Family Trust; Everly and Sons Music, (BMI), Defendants-Appellants.

No. 19-5150

United States Court of Appeals, Sixth Circuit.

Argued: October 23, 2019

Decided and Filed: May 4, 2020

JOHN K. BUSH, Circuit Judge.

The Everly Brothers are one of the most famous duos in popular American music history. When Dick Clark introduced them to sing Cathy’s Clown on his American Bandstand television show, he said the song "has a sound all its own"—one he called a "little unusual, [a] little strange, but very, very successful, and it’s done in the inimitable style of the fellas who have done so many other hits."¹ This dispute over the authorship of Cathy’s Clown is likewise a little unusual and a little strange. And, as we discuss, it is the jury’s obligation to sort it all out.

Each side to this appeal—Don Everly, on the one hand, and the successors-in-interest of his brother, the late Phil Everly, on the other—claims to have a copyright interest in Cathy’s Clown . Don maintains he authored the song by himself, but Phil’s successors contend the brothers wrote it together. Don sued Phil’s successors, seeking a declaration that Don was the sole author, while Phil’s successors counterclaimed for declaratory relief that both brothers were authors. The district court granted summary judgment to Don, finding that the claim of Phil’s co-authorship was barred by the statute of limitations because Don expressly repudiated Phil’s co-authorship, and thus triggered the statute of limitations, no later than 2011. Because there is a genuine factual dispute as to whether Don made such an express repudiation, we REVERSE .

I.

We begin by going back sixty years, to 1960, when the Everly Brothers recorded, released, and copyrighted Cathy’s Clown , which would be one of their most successful songs. That same year they also recorded and released Sigh, Cry, Almost Die and That’s Just Too Much . (We refer to the three songs collectively as "the Compositions."). Don and Phil granted 100% of the copyrights in the Compositions, including the rights to renew the copyrights, to Acuff-Rose Publications ("Acuff-Rose") in March and July 1960 ("1960 Grants").

The original copyrights to the Compositions listed Phil and Don as authors, and the brothers were credited as co-authors, each receiving royalties, pursuant to their agreement with Acuff-Rose. They were both credited as authors of Cathy’s Clown when Broadcast Music, Inc. ("BMI") presented them with an award for the hit in 1961, and again when BMI gave them a second award in 1975. The brothers also took joint credit for authoring the song in a television interview on The David Frost Show in 1972.

After sharing credit with his brother for many years, Don suddenly changed his tune. Sometime after the brothers stopped speaking in 1973, Don approached Phil about the rights to Cathy’s Clown . There is evidence suggesting that this interaction occurred in 1980, either by letter or phone. Phil’s wife, Patti Everly, testified that Phil had told her that Don had "demanded that [Phil] take his name off" the song, and that he "no longer had credit as a writer." R. 19-2, PageID 146. Joey Paige, Phil’s friend and the band’s bass player, testified that he personally overheard Phil’s side of the phone call. He described the call as "verbally violent" and testified that the result of the call was that Phil would give Cathy’s Clown back to Don. R. 19-4, PageID 179–80. According to Paige, he overheard Phil say "[y]ou know I wrote half that song." Id. , PageID 179. The record is unclear, however, because Don himself testified that he never made a phone call to Phil in 1980. Don claimed that the only communication between the two of them on the topic was a letter he sent to Phil sometime after 1975. R. 19-1, PageID 136; R. 22-1, PageID 430–31.² The letter, however, has not been produced in this litigation.

In June 1980, Don and Phil executed a document titled "Release and Assignment" (the "1980 Release"), in which Phil agreed to "release, and transfer, to the said Don Everly all of his rights, interests and claim in and to said compositions, including rights to royalties and his claim as co-composer, effective June 1, 1980." R. 1-3, PageID 21. Phil further agreed to "transfer, release, assign and set over unto Don Everly all of his rights, titles, interests and claim to the [Compositions]," which included "not only the said Phil Everly’s right to royalties and other income arising out of the said compositions from and after the effective date, but also every claim of every nature by him as to the compositions of said songs." Id.

Following the 1980 Release, Don received all royalty payments and public credit as author of Cathy’s Clown , and Acuff-Rose changed its business records to reflect Don as sole author. Similarly, the licenses and credits for Cathy’s Clown issued by Acuff-Rose, and its successor-in-interest Sony/ATV Music Publishing, listed Don as the only author. When Acuff-Rose exercised its right to renew the copyright to Cathy’s Clown in 1988, it listed Don as the only author. Despite these changes in royalties and public attribution, both brothers made public statements continuing to credit Phil as a co-author, in both a 1984 biography of the Everly Brothers and a television interview that same year on Rock ‘N’ Roll Odyssey .³

Cathy’s Clown gained new life in 1990 when Reba McEntire released a cover version of the song, for which Don was credited as sole author in the album cover, sheet music, packaging, and press materials. Don was awarded the Robert J. Burton Award for BMI Country Music Singer of the Year for his contribution to the Reba McEntire cover, and he received the award as the sole author at the BMI ceremony.

In 2011, Don sought to execute his right to termination under 17 U.S.C. § 304(c), which allows authors to terminate certain copyright grants and transfers and thus regain copyright ownership in their work. Specifically, Don sought to terminate the 1960 Grants to Acuff-Rose ("2011 Termination") in a notice of termination recorded with the Copyright Office on July 15, 2011, with an effective date of April 14, 2016. Pursuant to this termination, Don claims to have exclusive copyright ownership of the Compositions. Don also sought to remove Phil’s name as author of the original copyrights at that time, but the Copyright Office rejected this effort as untimely.

Phil exercised termination rights of his own as to certain compositions, both in 2007 and again in 2012, but never attempted to terminate the 1960 Grants or any other grant related to Cathy’s Clown or the other Compositions. After Phil’s death in 2014, however, his children filed notices of termination as to the 1960 Grants seeking to regain Phil’s rights to Cathy’s Clown .⁴ In 2016, they also served a notice of termination as to Phil’s 1980 Assignment to Don.⁵

II.

On November 8, 2017, Don filed a complaint for declaratory relief against Patti Everly, Jason Everly, and Chris Everly as the statutory successors to Phil’s termination rights under the copyright laws, and against the Phillip Everly Trust ("Trust") and Everly and Sons Music (BMI) as legal owner or successor to Phil Everly’s rights or as legal owner of the statutory successors’ rights. Don sought an order declaring that (1) Phil Everly is not an author of Cathy’s Clown ; (2) the 1980 Release is not a grant subject to termination under 17 U.S.C. §§ 304(c), 203(a) ; and (3) Don Everly owns 100% of the copyright termination rights in Cathy’s Clown , and 100% of the songwriter royalties to the Compositions. R. 1, PageID 11–13.

Defendants filed an answer, including various affirmative defenses, and counterclaims seeking declarations that (1) Phil Everly is an author of Cathy’s Clown ; (2) defendants’ notice of termination of the 1980 Release was valid; and (3) defendants are entitled to one-half of the income earned from Cathy’s Clown . R. 5, PageID 71. The answer and counterclaims do not address Sigh, Cry, Almost Die or That’s Just Too Much .

Don moved for summary judgment. He argued that the counterclaims were barred by the statute of limitations, entitling him to summary judgment on counts I and III of the complaint.

The district court found that Phil’s authorship had been expressly repudiated no later than 2011, when Don filed his notice of termination of the 1960 Grants, thus triggering the statute of limitations. Holding Phil’s claim for authorship barred by the statute of limitations, the court granted summary judgment in favor of Don on counts I and III. It then dismissed count II, reasoning that the question of whether the 1980 Release could be subject to termination was mooted in light of its finding that defendants had no claim to authorship and, accordingly, no termination rights. R. 26, PageID 517–18. The court therefore entered an order declaring that (1) defendants are barred from asserting a claim based on Phil’s co-authorship of the Compositions; (2) defendants are estopped from asserting any termination rights based on that purported authorship; (3) Don Everly owns 100% of the United States copyright in the Compositions and 100% of the songwriter royalties derived from the Compositions; and (4) any notices of termination filed by defendants pertaining to the Compositions are invalid. R. 27, PageID 520–21.

Defendants then moved for reconsideration, arguing for the first time that the district court improperly applied the statute of limitations to their factual defenses because the statute of limitations cannot be used as a "sword." R. 33, at PageID 603. They further contended, also for the first time, that Phil’s termination claims cannot be time-barred because termination rights cannot accrue prior to their effective termination date.

The district court denied defendants’ motion for reconsideration. Defendants timely appealed.

III.

We review a district...