Jones v. Virgin Records, Ltd.

• Decision Date: 26 April 1986
• Docket Number: No. 84 Civ. 5907 (MJL).,84 Civ. 5907 (MJL).
• Citation: 643 F. Supp. 1153
• Parties: Jimmy JONES and Otis Blackwell, Plaintiffs, v. VIRGIN RECORDS, LTD., Epic Records, a division of CBS, Inc., Virgin Music Publishing Ltd., Warner Tamerlane Music, a division of Warner Communications, Inc., and CBS Catalogue Partnership, Defendants.
• Court: U.S. District Court — Southern District of New York

643 F. Supp. 1153

Jimmy JONES and Otis Blackwell, Plaintiffs, v. VIRGIN RECORDS, LTD., Epic Records, a division of CBS, Inc., Virgin Music Publishing Ltd., Warner Tamerlane Music, a division of Warner Communications, Inc., and CBS Catalogue Partnership, Defendants.

No. 84 Civ. 5907 (MJL).

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

March 4, 1986.

As Amended April 26, 1986.

Feinman & Krasilovsky by Andrew J. Feinman, New York City, for plaintiffs.

Fischbach, Mahoney, Fischbach & Weiner by Probstein & Napolitano, New York City, for defendants Virgin Records Ltd. and Virgin Music Publishers Ltd.

MEMORANDUM OPINION AND ORDER

LOWE, District Judge.

This copyright infringement action involves two of the most popular songs in recent years. The plaintiffs are the composers of the song "Handyman." They seek injunctive relief, actual damages, profits and reasonable attorney's fees and costs for the alleged infringement of the copyright in "Handyman" by marketing of the defendant's song "Karma Chameleon."

Defendants move for summary judgment. For the reasons stated below, summary judgment is denied.

BACKGROUND

The plaintiffs, Jimmy Jones ("Jones") and Otis Blackwell ("Blackwell"), composed the song "Handyman" in 1959. In June of that year, Jones and Blackwell assigned their rights in this work to Shalimar Music Corporation ("Shalimar") and its successors and assigns expressly retaining the right to receive royalties.

In September of 1959, Shalimar registered "Handyman" and filed sheet music of this version ("1959 version") with the Copyright Office pursuant to the 1909 Copyright Act ("1959 registration"). Thereafter, Shalimar assigned its interest in the song and through a series of conveyances, the composition and the copyright therein were acquired and are currently owned by CBS Catalogue Partnership, a subsidiary of CBS, Inc. Printed sheet music of the 1959 version was published in 1964 by Travis Music Company and in 1977 by United Music Publishing Group.

In 1960, Jones recorded the song "Handyman" on phonorecords which were sold to the general public by Cub Records. This recorded version ("1960 version") of the song contained additional words and music not found in the 1959 version filed with the Copyright Office. The 1960 version achieved considerable popularity and was later recorded by Del Shannon in 1964 and James Taylor in 1977 with similar success.¹

The additional words and music included in all three recordings of the 1960 version consisted of an eight measure chorus consisting of the following words:

Come-a, come-a, come-a Come-a, come, come yeah, yeah, yeah Come-a, come-a, come-a Come-a, come, come Hold on, They'll come running to me Yeah, Yeah, Yeah Yeah, Yeah, Yeah.

It appears that the 1960 version was never reduced to printed sheet music.²

The allegedly infringing song, "Karma Chameleon", was written and recorded by rock personality "Boy George" (George O'Dowd) and the members of his band, Culture Club, in 1983. By February of 1984, "Karma Chameleon" reached number one on the national charts.

Plaintiffs contend that the portion of the chorus which was added to the 1960 version of "Handyman" namely: "come-a, come-a, come-a, come-a-" is infringed by the chorus of "Karma Chameleon" which consists of the words:

Karma, Karma, Karma, Karma Karma, Chameleon.

Plaintiffs argue that the allegedly infringed portion of the 1960 version is an important part of that work which constitutes the "hook" or "eye-catcher" and suggest that it was in large part responsible for the financial success of the song.

The 1960 version was not registered with the Copyright Office until August 10, 1984, ("1984 registration")³ when a claim of copyright in the 1960 version was filed in the name of CBS Catalogue Partnership.

Jones and Blackwell instituted this suit for infringement against Virgin Records, Ltd. and Epic Records (issuers of the phonorecords on which "Karma Chameleon" is recorded), Virgin Music Publishing, Ltd. and Warner Tamerlane Music (purported owners of the copyright in "Karma Chameleon") and CBS Catalogue Partnership (joined as a nominal defendant, see infra, unnumbered n. at 1160).

Defendants Virgin Music Publishing Ltd., Inc. and Virgin Records Ltd. now move for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. In support of their motion, defendants first contend that since plaintiffs have assigned their copyright they have no standing to sue for infringement or alternatively, that they have not sufficiently alleged such standing. Second, defendants assert that the song "Handyman" has entered the public domain since the plaintiffs failed to affix copyright notice to the phonorecords and the song was published without statutory copyright protection. Third, defendants claim that the plaintiffs' 1984 copyright registration of the 1960 version was ineffective. Finally, defendants maintain that the plaintiffs are estopped from alleging infringement. In the alternative, defendants request that should this Court find that the song "Handyman" is in fact protected by copyright, the Court rule that the plaintiffs are not entitled to statutory damages or attorney's fees.

Despite the obvious difficulty plaintiffs will encounter proving that "Karma Chameleon" infringes the 1960 version of "Handyman," defendants concede that infringement is a question of fact which must be determined by the finder of fact at trial and is not an issue addressable in a Rule 56 proceeding.

DISCUSSION

a. Standing to Sue

As a threshold issue, defendants maintain that the plaintiffs do not have standing to sue since they assigned the legal title to and the copyright in the work. Plaintiffs counter that when they assigned the song to Shalimar and its assigns, they retained a beneficial interest in that work sufficient to maintain this action.⁴

Section 501(b) of the 1976 Copyright Act provides that "the legal or beneficial owner of an exclusive right under copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b) (1976). A beneficial owner of an exclusive right includes "an author who has parted with legal title to the copyright in exchange for percentage royalties based on fees or license sales." H.R.Rep. No. 1476, 94th Cong., 2nd Sess. 159 (1976), U.S.Code Cong. & Admin.News 1976, pp. 5659, 5775.

This definition was recently adopted by the Court of Appeals for the Second Circuit in Cortner v. Israel, 732 F.2d 267 (2nd Cir.1984), rev'g, 568 F.Supp. 1217 (S.D.N.Y. 1983).

In Cortner, the plaintiffs assigned their composition and all rights therein to ABC in exchange for ABC's obligation to pay royalties. Cortner, 732 F.2d at 269. The Court of Appeals held that the composer's contingent right to receive royalties constituted a sufficient beneficial interest to give them standing to seek relief under both the 1909 and 1976 Copyright Acts. Cortner, 732 F.2d at 271.

In the instant case, plaintiffs have retained a number of rights in the song including the right to receive royalties based on the sales of the work.⁵ Accordingly, the plaintiffs have retained a sufficient beneficial interest in the song to have standing to sue for any infringement of the copyright in that work.

Defendants nevertheless contend that the plaintiffs have not sufficiently alleged or proven the existence of any present beneficial interest. Defendants would argue that the plaintiffs must produce evidence relating to the subsequent chain of ownership which would establish that their interest in the song still exists.

Admittedly, plaintiffs have not submitted evidence of a present beneficial interest in the song. Plaintiffs have however, attached to their affidavit in opposition to defendants' motion for summary judgment the original contract in which they retained numerous rights in "Handyman". See supra unnumbered n. at 1156. This evidence is sufficient to defeat a motion for summary judgment. At this early stage in the proceedings, plaintiffs may not be denied the opportunity to provide evidence to support a claim of a present beneficial interest. Brennan v. Paramount Pictures Corp., 209 F.Supp. 150, 152 (S.D. N.Y.1962). See also Southern Music Pub. Co. v. Walt Disney Prod., 73 F.Supp. 580, 583 (S.D.N.Y.1947) (attaching assignment contract to complaint is sufficient where it tends to support plaintiff's allegations).

b. Public Domain

1. Notice

Defendants contend that the plaintiffs' failure to affix a notice of copyright in the song "Handyman" to the 1960 phonorecords ceded the work to the public domain. This contention is meritless.

In White-Smith Publishing Co. v. Apollo Co., 209 U.S. 1, 28 S.Ct. 319, 52 L.Ed. 655 (1909), the United States Supreme Court held that a music roll (and by extension a phonorecord) is not a copy within the meaning of the Copyright Act since a copy must be intelligible and in a form which can be seen or read. White-Smith Pub. Co., 209 U.S. at 17, 28 S.Ct. at 323. The 1909 Copyright Act implicitly adopted this definition of "copy", 1 Nimmer § 2.03B1 (1985), and did not require that a phonorecord have notice of copyright affixed to it in order to protect the underlying musical work recorded thereon. 3 Nimmer § 7.12B (1985).⁶ The failure to affix notice to the phonorecord therefore, did not affect any statutory or common law copyright protection otherwise applicable to the underlying work. Buck v. Heretis, 24 F.2d 876 (E.D.S.C.1928); Buck v. Lester, 24 F.2d 877 (E.D.S.C.1928). See H.R.Rep. No. 1476, 94th Cong., 2nd Sess. 145 (1976). The current act similarly does not require that notice of copyright in a musical work be affixed to a phonorecord in order to protect the underlying musical work.⁷ H.R.Rep. No. 1476, 94th Cong., 2nd Sess. 145 (1976); 2 Nimmer § 7.06B (1985). Cf. U.S. v. Taxe, 540 F.2d 961, 966 (9th Cir. 1976), cert. denied, 429 U.S. 1124, 97 S.Ct. 1163, 51 L.Ed.2d...