GREENWICH FILM PRODUCTIONS v. DRG RECORDS, 91 Civ. 0546 (JSM).

• Decision Date: 03 September 1993
• Docket Number: No. 91 Civ. 0546 (JSM).,91 Civ. 0546 (JSM).
• Citation: 833 F. Supp. 248
• Parties: GREENWICH FILM PRODUCTIONS, S.A., Plaintiff, v. DRG RECORDS, INC., DRG Music, a division of DRG Records, Inc., and Hugh Fordin, individually and d/b/a DRG Music, Defendants.
• Court: U.S. District Court — Southern District of New York

833 F. Supp. 248

GREENWICH FILM PRODUCTIONS, S.A., Plaintiff, v. DRG RECORDS, INC., DRG Music, a division of DRG Records, Inc., and Hugh Fordin, individually and d/b/a DRG Music, Defendants.

No. 91 Civ. 0546 (JSM).

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

September 3, 1993.

Keith S. Orenstein, Orenstein Musoff & Orenstein, P.C., for plaintiff.

Elizabeth McNicoll, Eisenberg Tanchum & Levy, for defendants.

MEMORANDUM OPINION AND ORDER

MARTIN, District Judge.

Plaintiff Greenwich Film Productions, S.A. ("Greenwich") brings this action for breach of contract, copyright infringement, trademark infringement, and unfair competition.

Background

In 1980 Greenwich began production of the film "DIVA" and contracted Vladimir Cosma ("Cosma") to compose music for the soundtrack. The film was released in France in 1981 and was an immediate success, both commercially and critically. At roughly the same time, a "single" was released from the soundtrack.

Hoping to duplicate the film's success outside of France, Greenwich began worldwide distribution of the film in 1982. At the same time, Greenwich entered into negotiations with defendant DRG Records, Inc. ("DRG Records") concerning distribution rights in the musical soundtrack. These negotiations resulted in a licensing agreement (the "License") granting DRG Records the exclusive right for a term of five years to manufacture and distribute the "DIVA" musical soundtrack. By its terms, this License expired on June 22, 1987. However, instead of surrendering the "master" to Greenwich as required by the terms of the License, DRG Records continued manufacturing and distributing "DIVA" recordings. Furthermore, DRG Records entered into agreements with third parties to further exploit the "DIVA" musical soundtrack.

In a Memorandum Opinion and Order issued September 18, 1992, which more fully sets forth the facts, this Court entered summary judgment against Greenwich on its claims for trademark infringement and unfair competition. However, the Court found that Greenwich had established that there was no genuine issue of material fact as to two of the three elements for a successful copyright infringement suit, ownership and unlawful copying. As to the former, although Greenwich's claim that it owned the copyrights because the musical compositions were "works for hire" was rejected, it was determined that Greenwich had obtained the copyrights to the musical compositions by a valid transfer in writing from Cosma. Thus the only deficiency preventing Greenwich from obtaining summary judgment on this claim was its failure properly to record the transfer of copyrights and to register its copyright claims prior to bringing suit as is required by law.¹ 17 U.S.C. §§ 205(d), 411(a). Accordingly, the Court denied Greenwich's motion for summary judgment on the claim for copyright infringement with leave to renew the motion upon completion of recordation and registration.

After filing a supplemental complaint alleging registration of the copyright claim in the movie "DIVA", Greenwich now renews its motion for summary judgment, claiming to have registered its copyright claims in the movie "DIVA" and the related sound recording and to have submitted appropriate documentation to the Copyright Office for recordation of the transfer of copyright in the musical compositions. Defendants, hereinafter collectively referred to as "DRG", argue that Greenwich does not deserve summary judgment because (1) copyrights in the underlying musical compositions have not been properly registered; (2) the transfer has not been properly recorded; and (3) the registration for the movie "DIVA" on which Greenwich relies incorrectly identifies the relationship under which the copyrights were obtained.

Greenwich has submitted the following documents, inter alia, in support of its renewed summary judgment motion. First, Greenwich has submitted copyright registration no. PA 536 953 in which it registered its copyright claims in the motion picture "DIVA". The certificate lists only one author, "Les Films Galaxie Greenwich Film Production,"² and designates its contribution as a "work made for hire." The certificate further asserts that the work was derived from a novel, and that material was added to make it into a motion picture. In addition, Greenwich presents copyright registration no. PA 609 316, a supplementary copyright registration referencing PA 536 953 which purports to "amplify" the copyright claim in the original registration by listing for inclusion seven musical compositions contained on the soundtrack. Greenwich also submitted another application for supplementary registration referencing PA 536 953 in which the claim is "amplified" to include twelve musical compositions on the soundtrack; although that application was apparently sent to the Copyright Office accompanied by a cover latter dated May 28, 1993, there is no evidence that registration of it has been made.

Besides the registration for "DIVA" the motion picture, Greenwich has also submitted certificate no. SR 124 353 for registration of a sound recording consisting of the original motion picture soundtrack of the film, which sound recording was also entitled "DIVA".³ The certificate indicates authorship in the nature of editing and remixing by Greenwich Film Productions, S.A. and asserts that the sound recording is a derivative work of the film.

As to recordation of the transfer, Greenwich submits a copy of a cover letter itemizing enclosures consisting of the transfer instruments, which cover letter was sent to the Copyright Office, and which copy was returned to Greenwich bearing stamps indicating that it was received by the "Document Section" on December 11, 1992.

Discussion

Registration

DRG contends that Greenwich has not yet obtained proper registration for the musical compositions contained in the movie soundtrack and the derivative sound recording, and thus cannot sue on those rights.

First of all, it is not clear that Greenwich need do more than establish registration for the sound recording itself. Greenwich has established that DRG was distributing copies of the "soundtrack" of "DIVA", which we understand to mean the sound recording derived from the audio portion of the motion picture. See supra n. 3. Greenwich's copyright claims in the sound recording have clearly been registered under certificate no. SR 124 353. Thus, it would seem that Greenwich's registration obligations are satisfied if indeed it seeks only to claim infringement of copyright in that work. However, assuming for the sake of argument that Greenwich needs to establish separate infringement of the underlying musical compositions themselves, we proceed to consider whether they were properly registered.

Greenwich contends that the musical compositions have been registered by virtue of the registration of the motion picture in which they were contained. DRG argues that musical compositions must be separately registered, especially where, as here, the compositions were created by a different author.

There is a paucity of authority on this issue, but what exists indicates that the registration for the motion picture covers the musical compositions therein contained as well. We start with the words of the statute: "The Registrar of Copyrights is authorized to specify the administrative classes into which works are to be placed for purposes of deposit and registration.... The regulations may require or permit ... a single registration for a group of related works." 17 U.S.C. § 408(c)(1).

37 C.F.R. § 202.3(b)(3)(i) reads in pertinent part: "For the purpose of registration on a single application and upon payment of a single registration fee, the following shall be considered a single work: ... All copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same ..." Thus, since Greenwich is the copyright claimant of the musical compositions as a result of the transfer from Cosma, it is entitled to register the compositions together with the film in a single application.

DRG contends that since the musical compositions were prepared in advance of the completion of the film, the film is in fact a derivative work of both the novel and the musical compositions, and thus the compositions cannot be registered by a certificate covering the derivative work. Even if we were to accept this construction of the facts, Greenwich's registration of the compositions is still valid. The authoritative work of Nimmer on Copyright has addressed this issue:

Suppose that the allegedly infringed work is a derivative or collective work, and that the defendant copied from the derivative or collective work the preexisting work contained therein as well as the original material newly contributed to the derivative or collective work. Will a registration certificate relating to the derivative or collective work suffice to permit an infringement action based upon the defendant's infringement of the preexisting work, or is it necessary (as is possible) first to register separately the preexisting work even though the defendant copied such preexisting work from the derivative or collective work? On principle, plaintiffs ... would seem obligated to file a separate registration relating to the preexisting work, given that it is that copyright which has been infringed even though the defendant copied directly from the derivative or collective work. The copyright owner of a derivative or collective work does not in such capacity obtain copyright in any preexisting work even though he may be licensed to incorporate such material in the derivative or collective work. The fact that the copyright owner of the derivative or collective work is not merely the licensee of the preexisting work but is himself the copyright owner therefore may alter this conclusion, and permit the

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