USDC S.D. New York, September 16, 2009
- Despite the fact that defendants filed a copyright registration for the composition listing themselves as the copyright claimants and provided royalty checks and statements to plaintiff for the composition, court holds that songwriter agreement between plaintiff Barbara Mason when she was a minor and defendants did not constitute a transfer of plaintiff’s copyright interest in a song that she wrote because the court-approved agreement did not contain the schedule listing the composition or any mention thereof
Barbara Mason, the sole author of a composition called “Yes I’m Ready,” filed a motion to intervene as a plaintiff in a copyright dispute between Jamie Music Publishing and Roc-A-Fella Records. Mason sought a declaratory ruling that she is the owner of the copyright in the composition.
Mason wrote the composition in 1965 when she was 17 years old. The same year, the Philadelphia Orphan’s Court appointed a guardian for Mason and required that all proposed contracts on behalf of Mason be submitted to the Orphan’s Court for approval prior to execution by the guardian. The Orphan’s Court approved and the guardian executed several agreements on behalf of Mason including a songwriter’s agreement in which Mason agreed to sell, transfer, assign and deliver to defendants all music and musical compositions written by Mason during the term, and that Mason would assign her rights to any previously composed songs that were mentioned on an attached list of musical songs and compositions marked as “Schedule B.” Schedule B was never filed with the Orphan’s Court and none of the documents on file with the Orphan’s Court contain any mention of the song “Yes I’m Ready.”
Prior to the execution of the songwriter’s agreement, and prior to the appointment of the guardian, defendants filed an application to register the copyright to the composition which listed defendants as the copyright claimants (owners) of the copyright and Mason as the author. Mason renewed the copyright to the composition in her own name in 1993. In 2007, Mason entered into a purchase agreement with Embassy Music Corporation (EMB) in which EMB agreed to purchase Mason’s copyright interest in the composition.
Defendants argued that Mason assigned her rights to the composition to defendants in the 1965 songwriter’s agreement and urged the court to consider extrinsic evidence to reach this conclusion, acknowledging that the songwriter’s agreement on file with the Orphan’s Court was incomplete. Defendants also argued that their 1965 registration of the copyright was prima facie evidence of their copyright ownership and that Mason lacks standing to seek a declaratory judgment because she assigned her copyright interest to EMB in 2007.
The court held that Mason has standing to sue as a beneficial owner of the copyright because the purchase agreement with EMB had not been completed and, even if the agreement had been completed, Mason would still be a beneficial owner because she will receive royalties under the purchase agreement.
Regarding the songwriter’s agreement, the court held that because Mason was a minor and her contracts had to be approved by the Orphan’s Court, and because the agreement on file with the Orphan’s Court did not contain Schedule B or any mention of the composition, the agreement did not constitute a transfer of Mason’s copyright interest to defendants. The court also rejected defendants’ argument that royalty checks and statements and other correspondence sent to Mason, in conjunction with the incomplete songwriter’s agreement and the exploitation of the composition, constitute a written transfer of Mason’s copyright interest. According to the court, the royalty checks and statements established that Mason and defendants were engaged in a business relationship, and that such statements are as indicative of a license as an assignment, and thus do not imply an assignment.
The court also held that although a copyright registration is prima facie evidence of ownership, it is a rebuttable presumption and, where other evidence in the record casts doubt on registration, validity will not be assumed. Even if the 1965 registration listing defendants as claimants were valid, the court noted that Mason successfully renewed her copyright in the composition in 1993. And, although the songwriter’s agreement specifically granted Mason’s renewal rights in works listed in Schedule B to defendants, as noted earlier, Schedule B was not approved by the Orphan’s Court and thus Mason did not grant her renewal rights to defendants in that agreement.
Finally, the court rejected defendants’ equitable defenses of estoppel and laches. The court concluded, in part, that defendants could not avail themselves of the equitable doctrine of laches as a bar to Mason’s claim because that argument is not available to parties with “unclean hands.” The court disapproved of defendants’ 1965 registration of the copyright while Mason was still a minor, before a guardian had been appointed for her and without approval of the Orphan’s Court.