Parker v. Hinton

• Decision Date: 24 January 2023
• Docket Number: 22-5348
• Parties: WILLIA DEAN PARKER; ROSE BANKS, individually and as successor-in-interest to Homer Banks, Plaintiffs-Appellants, v. SARAH HINTON, in her capacity as executor of the Estate of Spencer Davis, Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

WILLIA DEAN PARKER; ROSE BANKS, individually and as successor-in-interest to Homer Banks, Plaintiffs-Appellants,
v.
SARAH HINTON, in her capacity as executor of the Estate of Spencer Davis, Defendant-Appellee.

No. 22-5348

United States Court of Appeals, Sixth Circuit

January 24, 2023

NOT RECOMMENDED FOR PUBLICATION

ON APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE MIDDLE DISTRICT OF TENNESSEE

Before: SUHRHEINRICH, CLAY, and DAVIS, Circuit Judges.

OPINION

SUHRHEINRICH, CIRCUIT JUDGE

In this copyright action, Plaintiffs allege that the Spencer Davis Group, in their song Gimme Some Lovin', copied a riff-a distinct pattern of musical notes-from Plaintiffs' song Ain't That a Lot of Love. The district court held that Plaintiffs failed to establish the prerequisites to suit-copyright registration and deposit-and dismissed their claim on summary judgment. We affirm.

I.

Willia Dean Parker and Homer Banks co-wrote Ain't That a Lot of Love in 1965. Banks recorded and released the song with two record labels in 1965 and 1966. Several artists have released Ain't That a Lot of Love over the years, including Banks on his 2005 self-titled album.

In 1966, Parker and Banks assigned the song's publication rights to East Publications, Inc. in exchange for certain distribution and performance royalties. East Publications registered the

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song on Parker and Banks's behalf as an unpublished work with the Copyright Office in April 1966.

Also in 1966, when Ain't That a Lot of Love hit the airwaves, the Spencer Davis Group released a remixed version of Gimme Some Lovin'. Gimme Some Lovin' was a hit. The song eventually topped out at number seven in the United States and number two in the United Kingdom. The Spencer Davis Group's record label registered Gimme Some Lovin' as a published work with the Copyright Office in March 1967.

In 1968, Banks assigned his rights to the song to East/Memphis Music Corp. ("East Memphis Music"), the successor to East Publications. Banks stated in a separate 1968 agreement that he wrote Ain't That a Lot of Love in the course of his employment with East Memphis Music. That same year, East Memphis Music released a copy of Ain't That a Lot of Love's sheet music to the public with a notice of copyright.

Rights to Ain't That a Lot of Love have changed hands over the years and are now held by Universal Songs of Polygram International, Inc. ("Universal"). Plaintiffs did not join Universal to this case.

Parker and the late Banks's wife, Rose, brought this suit in 2017 against the late Spencer Davis (now represented by his estate's representative Sarah Hinton).^[1] The district court granted summary judgment to Hinton. Plaintiffs timely appealed.

A.

This court reviews a grant of summary judgment de novo. See RJ Control Consultants, Inc. v. Multijet, LLC, 981 F.3d 446, 452 (6th Cir. 2020). The moving party is entitled to summary

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judgment "if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247 (1986). The court must "view factual evidence in the light most favorable to the non-moving party and draw all reasonable inferences in that party's favor." Jones v. Blige, 558 F.3d 485, 490 (6th Cir. 2009).

"[A] party seeking summary judgment always bears the initial responsibility" to show there is no dispute regarding any genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). "Once the moving party satisfies its initial burden, the burden shifts to the nonmoving party to set forth specific facts showing a triable issue of material fact." Mosholder v. Barnhardt, 679 F.3d 443, 448-49 (6th Cir. 2012). If the nonmoving party "fail[s] to make a sufficient showing on an essential element of her case," an element on which she will bear the burden at trial, the movant is entitled to summary judgment. Celotex, 477 U.S. at 323.

B.

The Copyright Act of 1909 ("1909 Act") permitted the copyright of musical compositions, Copyright Act of 1909 (codified as amended), ch. 320, § 5(e), 35 Stat. 1075, 1076 (repealed 1976),^[2] but only musical compositions transcribed in sheet music or other manuscript form, see Skidmore v. Led Zeppelin, 952 F.3d 1051, 1061 (9th Cir. 2020) (en banc).^[3] To register a copyright, an author had to submit to the Copyright Office a registration application, a fee, and the appropriate number of deposit copies of his or her work. Copyright Act of 1909, §§ 11, 209. Registration of an

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unpublished work required one "complete" deposit copy. Id. § 12. Registration of a published work required two "complete" deposit copies. Id. § 13. A plaintiff could not bring an infringement claim under the 1909 Act for either published or unpublished works unless the copyright was registered. Id.

Congress extended copyright protection to sound recordings in the Copyright Act of 1976 ("1976 Act"). Copyright Act of 1976, 17 U.S.C. § 102(a)(2), (a)(7). The basic registration requirements remain the same under both Acts. Copyright Act of 1909, § 11; Copyright Act of 1976, 17 U.S.C. § 408(a), (b). Registration is still a prerequisite to suit. Copyright Act of 1976, 17 U.S.C. § 411(a).

C.

Initially, we consider Hinton's challenge to the district court's standing ruling. The district court, applying the 1976 Act, held that Plaintiffs had standing to sue as beneficial owners (authors who parted with the legal title to their copyright in exchange for royalties) of their copyright without joining Universal (Ain't That a Lot of Love's legal owner). Hinton argues that the 1909 Act's standing rules, which required a beneficial owner to join the legal owner to maintain a copyright infringement suit, apply here. In addition, Hinton argues that Rose Banks lacks standing because Homer Banks's 1968 agreement with East Memphis Music was a work-for-hire contract that vested the copyright interest in the publisher, not Banks.

Use of the word standing in this context is a misnomer. The proper question is whether Plaintiffs "ha[ve] a cause of action under the [copyright] statute," see Soehnlen v. Fleet Owners Ins. Fund, 844 F.3d 576, 581 (6th Cir. 2016) (quoting Am. Psychiatric Ass'n v. Anthem Health Plans, Inc., 821 F.3d 352, 359 (2d Cir. 2016)), not whether they satisfy the "irreducible constitutional minimum of standing," Lujan v. Defenders of Wildlife, 504 U.S. 555, 560 (1992); see also Smith v. Casey, 741 F.3d 1236, 1240-41 (11th Cir. 2014) (treating whether a copyright-

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infringement plaintiff has a right to sue as a statutory, not constitutional, standing inquiry); cf. Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 157 (2012) (holding that the 1976 Act's pre-suit registration requirement "does not restrict a federal court's subject-matter jurisdiction").

The district court correctly concluded that the 1976 Act applied because this suit was filed in 2019. Because Hinton's claim involves two versions of the Copyright Act, the Court will briefly address how each are interpreted. "Under the 1909 Copyright Act, which was the predecessor of the Copyright Act of 1976, a copyright 'proprietor' was the only individual who had standing to sue for an infringement." Silvers v. Sony Pictures Ent., Inc., 402 F.3d 881, 886 (9th Cir. 2005) (first citing 17 U.S.C. § 101(b) (1952); and then citing Gardner v. Nike, Inc., 279 F.3d 774, 77778 (9th Cir. 2002)). When determining the "owner" of a copyright under the 1909 Copyright Act, courts found that a proprietor's rights were indivisible, and thus, "could not be assigned piecemeal." Id. Thereafter, the 1976 Copyright Act was enacted and provided that "[t]he legal or beneficial owner of an exclusive right under a copyright is entitled" to sue for infringement. 17 U.S.C. § 501(b) (emphasis added); see also Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984). In contradiction to the 1909 Act, the 1976 Act "allowed for divisibility of ownership interests under a copyright." Silvers, 402 F.3d at 886 (emphasis omitted). Resolving this contradiction, Nimmer explains: "With respect to causes of action arising on or after January 1, 1978, any rights or remedies under the 1909 Copyright Act are superseded by the rights and remedies under the current Copyright Act.... [C]ases no longer arise based on alleged...