September 13, 2013, was the effective date for Victor Willis’ termination of copyrights granted to Scorpio Music (Black Scorpio) S.A. and Can’t Stop Productions, Inc. for Willis’ hit songs YMCA, I’m a Cruiser, Hot Cop, Ups and Downs, My Roomate and The Women. Willis was the original lead singer for the group, the Village People. He appeared onstage with the Village People dressed as either a cop or a naval officer.
These songs and others with lyrics written by Willis were registered with the U.S. Copyright Office in the late 1970’s in Willis’ name and the names of his co-authors. Willis transferred his interest in the songs to Can’t Stop, the exclusive U.S. sub-publisher and administrator for Scorpio, a French corporation. After Willis notified Scorpio and Can’t Stop in early 2011 that he was terminating the transfer of his copyrights, Scorpio and Can’t Stop sued Willis, challenging the validity of the termination and seeking a declaratory judgment that Willis has no rights in the copyrights to the songs. The district court ruled in Willis’ favor on the three major motions filed by Plaintiffs Scorpio and Can’t Stop to date. Early in the litigation, Scorpio and Can’t Stop claimed that Willis created the lyrics under a work made for hire agreement, but later abandoned that claim.
The copyright termination issue is considered by many to be a ticking time bomb. My post, Termination of Transfers Provision Applies to All Authors, Not Just Musicians, explains why the termination right exists.
The relevant statute is 17 U.S.C. §203:
(a) Conditions for Termination.–In the case of any work other than a work made for hire, the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:
(1) In the case of a grant executed by one author, termination of the grant may be effected by that author or, if the author is dead, by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s termination interest. In the case of a grant executed by two or more authors of a joint work, termination of the grant may be effected by a majority of the authors who executed it; if any of such authors is dead, the termination interest of any such author may be exercised as a unit by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s interest.
(Emphasis added by the district court).
Plaintiffs Scorpio and Can’t Stop argued that Willis could not terminate his copyright interest without the co-authors joining in.
The issue before the Court is whether, in a case where joint authors of a work transfer their respective copyright interests through separate agreements, a single author may alone terminate his separate grant of his copyright interest in the joint work or whether a majority of all the authors is necessary to terminate that grant.
(Order No. 1 pdf page 4).
Section 203(a)(1) provides, “In the case of a grant executed by one author, termination of the grant may be effected by that author.” Section 203(a)(1) goes on to provide, “In the case of a grant executed by two or more authors of a joint work, termination of the grant may be effected by a majority of the authors who executed it.” When referring to a grant executed by two or more authors of a joint work, section 203(a)(1) refers to a “grant” in the singular, not “grants.” Thus, under the plain meaning of the statute, if two or more joint authors join in a grant of their copyright interests, a majority of the authors is necessary to terminate the grant. If, however, a single joint author enters into a grant of his copyright interest, that author alone can terminate his grant.
(Order No. 1 pdf page 4).
The court was not persuaded by the Plaintiffs’ argument that the word “grant” in §203(a)(1) refers to all transfers made by joint authors, even when the transfers are separate transactions. The statute does not imbue the word “grant” with a special meaning that supports the Plaintiffs’ argument. In addition, “grant” should refer to a single transaction, because the termination time period is calculated from the date the grant is executed. If “grant” referred to multiple transactions, then the date from which the termination time is calculated would be uncertain.
Finally, it would be contrary to the purpose of the Act to require a majority of all joint authors who had, at various times, transferred their copyright interests in a joint work to terminate the legally permissible separate grant by one joint author of his undivided copyright interest in the work. The purpose of the Act was to safeguard authors against unremunerative transfers and address the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited. Under Plaintiffs’ interpretation, it would be more difficult to terminate an individual grant than it would be to make it in the first place.
(Order No. 1 pdf page 6).
The Plaintiffs argued that Willis’ post-termination interest compensation should be limited to the amount he received under the Agreements. The court ruled that Plaintiffs’ argument was not supported by the law and that Willis would get back what he transferred, which was his undivided interest in the whole.
The court dismissed Plaintiffs’ complaint for failure to state a claim, with leave to amend the complaint.
Plaintiffs filed an amended complaint, asking the court to determine what percentage of interest in the copyrights Willis can claim following termination of Willis’ grants. Plaintiffs argued that Willis’ interest should be limited to 33.3% at most. Willis filed a counterclaim, arguing that he is the sole author of the lyrics, even though three people were listed as the authors of the music and lyrics in the copyright registrations. Specifically, Willis claimed that Henri Belolo did not contribute as an author to either the lyrics or music to the songs. Willis claimed 50% ownership of the copyrights and that he is entitled to receive a 50% interest in the works. Plaintiffs brought a motion to dismiss Willis’ counterclaim. The court denied the motion.
Plaintiffs argued that Willis’ counterclaim was barred by the 17 U.S.C. §507(b) three year statute of limitations. Section 507(b) provides that “No civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.”
My post, Ghost Rider Comic Copyright Dispute Confirms 1909 Act Still Relevant, further discusses the copyright statute of limitation. For statute of limitation purposes, co-ownership claims accrue when the claimant receives communication of express repudiation of her ownership claims from a co-owner.
Willis’s claim is a type of co-ownership claim. Willis seeks declaratory relief that he owns 50% of the copyright interests in the disputed works. Willis also seeks ancillary relief in the form of an accounting by Plaintiffs and Belolo. Accordingly, under Zuill [Zuill v. Shanahan], Willis’s claim accrued when plain and express repudiation of Willis’s claim to ownership of 50% of the copyright interests was communicated to Willis.
(Order No. 2 pdf page 4).
Willis argued that his claim in the copyrights could not have accrued until he acted on his termination rights. The court disagreed:
Section 203 does not say anything about when the rights that are covered by the terminated grants must be determined, nor does it provide for a different statute of limitations for ownership claims raised in connection with terminated grants. Accordingly, the Court concludes that when coownership or sole ownership claims are raised in the context of the termination of grants, §507(b) operates as it normally does – e.g., it bars claims brought more than three years after plain and express repudiation of the ownership claim.
(Order No. 2 pdf page 6).
The court ruled that it is a question of fact whether Willis had actual notice of information repudiating his claim of 50% ownership and that the answer to that question could not be determined at that point in the litigation. The court did not believe that the copyright registrations and record labels listing a third copyright owner was enough, that, at the very least, the Plaintiffs must show Willis actually knew of the contents of the registrations and record labels.
Plaintiffs Scorpio and Can’t Stop filed a motion for partial summary judgment on the issue of whether Willis’ claim to 50% ownership of the copyrights to the songs is barred by the Copyright Act’s three year statute of limitation. The court ruled that there are triable issues of fact, precluding summary judgment and denied the Plaintiff’s motion.
Willis testified in a deposition in another case that he saw that Belolo was listed as a writer in album credits and that he saw from BMI statements that Belolo was receiving money for the songs written by Willis.
Willis testified that he asked Belolo about why he had put his name down as a writer on his songs, and Belolo said that “his mother told him that it was better to have a piece of the pie than none at all.”
(Order No. 3 pdf page 4).
The Court questions whether knowledge of Belolo’s name in song credits and/or notice that Belolo was receiving royalties on songs that Willis wrote constitutes plain and express repudiation of Willis’s claim that he is a 50% owner of the copyrights to the 24 Disputed Works. The parties have not briefed how the concepts of credits, royalties, and copyright relate to each other. It is unclear to the Court whether the fact that someone receives writing credit on an album and/or royalties necessarily means that the person also owns or claims to own a copyright interest in the work. Is it possible for an individual to be listed in the credits and receive royalties, perhaps pursuant to an agreement, but not claim copyright ownership?
(Order No. 3, pdf page 5).
This case is Scorpio Music (Black Scorpio) S.A. v. Willis, No. 11cv1557 BTM (RBB), U.S. District Court, Southern District of California.