Stillwater Ltd v. Antonia Basilotta ( 2022 )

NOT FOR PUBLICATION FILED
UNITED STATES COURT OF APPEALS MAY 11 2022
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
STILLWATER LTD, a United Kingdom No. 21-55241
Company,
D.C. No. 2:16-cv-01895-SK
Plaintiff-counter-claim-
defendant-Appellant,
MEMORANDUM*
v.
ANTONIA BASILOTTA,
Defendant-counter-claimant-
Appellee.
Appeal from the United States District Court
for the Central District of California
Steve Kim, Magistrate Judge, Presiding
Submitted May 9, 2022**
Pasadena, California
Before: WATFORD and FRIEDLAND, Circuit Judges, and ROBRENO,***
District Judge.
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
***
The Honorable Eduardo C. Robreno, United States District Judge for
the Eastern District of Pennsylvania, sitting by designation.
Stillwater filed an action against Antonia Basilotta, a singer and performer
whose stage name is “Toni Basil,” seeking a declaratory judgment about
Basilotta’s ownership of copyrights in certain sound records. Stillwater argued
that the recordings are “joint work” under the Copyright Act because Mathieson, a
producer, was a coauthor alongside Basilotta and thus that Basilotta’s share of the
copyrights in the recordings should be limited. The district court held a bench trial
and concluded that Stillwater had not proved by a preponderance of the evidence
that the recordings constituted “joint work.” We affirm.
Under the Copyright Act, a “‘joint work’ is a work prepared by two or more
authors with the intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole.” 17 U.S.C. § 101. An “author” is “the
party who actually creates the work, that is, the person who translates an idea into a
fixed, tangible expression entitled to copyright protection.” Cmty. for Creative
Non-Violence v. Reid, 490 U.S. 730, 737 (1989). In Aalmuhammed v. Lee, 202
F.3d 1227 (9th Cir. 2000), we set forth three factors for determining whether a
work is jointly authored. “First, an author ‘superintend[s]’ the work by exercising
control.” Id. at 1234 (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.
53, 61 (1884)). “Second, putative coauthors make objective manifestations of a
shared intent to be coauthors . . . .” Id. And “[t]hird, the audience appeal of the
work turns on both contributions and ‘the share of each in its success cannot be
2
appraised.’” Id. (quoting Edward B. Marks Music Corp. v. Jerry Vogel Music Co.,
140 F.2d 266, 267 (2d Cir.), modified by 140 F.2d 268 (2d Cir. 1944)).
Stillwater has not proved joint authorship by a preponderance of the
evidence.1 As to the first factor, Stillwater has produced little evidence that
Mathieson exercised control. A person exercising control is “likely [to] be a
person ‘who has actually formed the [work] by putting the persons in position, and
arranging the place where the people are to be—the man who is the effective cause
of that,’ or ‘the inventive or master mind’ who ‘creates, or gives effect to the
idea.’” Id. (quoting Burrow-Giles, 111 U.S. at 61). As to Mathieson’s role in
producing the recordings, the head of the recording company that hired Mathieson
asserted that Mathieson “carr[ied] out the duties of a record producer” in “an
extremely professional” manner that resulted in “very good” work—in other
words, he was “a first-class record producer.” According to that witness:
Mathieson’s job was to: (a) arrange and schedule
meetings and recording sessions . . . (b) ensure that
musicians and vocalists appeared as required; (c) obtain
the best possible performances from the vocalist and
musicians; (d) provide creative input . . . and (e) ensure
that the sound recordings were technically satisfactory
1
The parties dispute the proper standard of review for the district court’s
conclusions stemming from mixed questions of law and fact. Stillwater argues that
our review should be de novo, while Basilotta argues that our review should be for
clear error. We need not decide that question because Stillwater’s appeal fails
even under a de novo standard of review.
3
and commercially suitable.
Mathieson also mixed the master recordings. That witness further testified that his
knowledge came from him or his assistant “attend[ing] some of the [recording]
sessions” in person. Mathieson did not testify at trial or supply any written
testimony.
This vague description of Mathieson’s role as a producer, from someone
who only occasionally witnessed Mathieson performing that role, is inadequate to
prove that Mathieson was a creative mastermind behind the recordings rather than
someone who was, for instance, mixing the tapes largely at Basilotta’s direction
consistent with her creative vision. Meanwhile, there is strong evidence that
artistic control lay primarily with Basilotta and not with the recording company
or—by extension—Mathieson. For example, the company struck draft language
from its first contract with Basilotta that would have given it control over whether
a recording met a “satisfactory . . . artistic standard.” That change was maintained
in future contracts, which allowed the company only final approval to ensure that
recordings were “technically satisfactory and suitable in all respects for
commercial exploitation.” Furthermore, Basilotta appears to have primarily
wielded creative control, selecting songs and instrumental musicians, devising the
creative concepts for recordings, and even helping Mathieson mix the master tapes.
Cf. id. at 1233 (explaining that an author is someone “to whom the work owes its
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origin and who superintended the whole work, the ‘master mind’ . . . someone who
has artistic control”).2
As to “objective manifestations of a shared intent to be coauthors,”
Stillwater’s evidence is scanter. Id. at 1234. “The best objective manifestation of
a shared intent, of course, is a contract saying that the parties intend to be or not to
be co-authors,” but “[i]n the absence of [such] a contract, the inquiry must of
necessity focus on the facts.” Id. at 1235. Stillwater’s only meaningful argument
is that the agreements Mathieson signed with the recording company are objective
manifestations that Mathieson would be a coauthor. Those agreements provide
that any copyright interests to which Mathieson might be entitled were to be
transferred to the company and that he was to be paid royalties based on the
recordings’ sales—an arrangement similar to the one Basilotta had with the
2
Stillwater also emphasizes that the recording company, which assigned its
interest in the recordings to Stillwater, “financed and paid for the [recordings’]
creation, superintended the process by initially selecting and ultimately approving
the compositions to be recorded, approved the musicians involved in the
recordings, and contracted with Mathieson.” But, according to the district court,
that financing, approving, and contracting were not independently copyrightable,
so the recording company’s “contributions could not have made the company into
an author under copyright law independent of the work of its agents, like
Mathieson, who did make copyrightable contributions.” The court concluded that
“Mathieson’s work as the hired music producer, not [the company]’s business
activities as the record label, is the relevant locus of authorship analysis.”
Stillwater does not meaningfully dispute this conclusion. Accordingly, we do not
consider the company’s activities and focus our analysis on Mathieson’s
contributions.
5
company. But the producer agreements are between the recording company and
Mathieson, and not between the alleged coauthors here—that is, Basilotta and
Mathieson. They are therefore not evidence of any understanding between
Basilotta and Mathieson. In addition, it is telling here that Stillwater’s own
witness, the head of the recording company, testified that the notion of “joint
authors” never crossed his mind when he signed Basilotta as a recording artist.
The third factor, whether “the audience appeal of the work” can be attributed
to both alleged authors, id. at 1234, and whether “the share of each in its success
cannot be appraised,” id. (quoting Jerry Vogel Music Co., 140 F.2d at 267), weighs
against Stillwater as well. Stillwater’s own evidence suggests that the “audience
appeal” of the recordings was predicated more on Basilotta’s performance than on
anyone else’s. The head of the recording company testified that he signed
Basilotta because he wanted to produce albums with music videos and not just
recordings, and that Basilotta had unique audio-visual creativity. Consistent with
that vision, Basilotta’s first record album was turned into a music video album as
well, with Basilotta directing the visual component of the music videos. Although
authorship of the music video album is not disputed here, the emphasis on visuals
suggests that audience appeal of the record album was likely tied to Basilotta’s
performance in the accompanying videos. And, as Stillwater acknowledges, the
failure of Basilotta’s second and final album was largely attributed to her
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performance rather than to Mathieson’s, indicating that the work was judged on
how well Basilotta performed.
Stillwater makes one final argument, but it also fails. According to
Stillwater, the relationship between a producer and performer of a sound recording
is a traditional form of collaboration in which the producer is generally considered
a joint author so long as the producer completes his or her traditional duties. And,
on Stillwater’s view, because Mathieson performed all the responsibilities typically
undertaken by a producer, he should be considered a joint author. But even
assuming that there should be some presumption of joint authorship for traditional
producers, Stillwater has not shown that Mathieson is entitled to any such
presumption. Stillwater neither produced expert testimony detailing the traditional
duties of producers nor demonstrated that Mathieson performed such
duties. Instead, Stillwater pointed to various sources that speak about traditional
producers without establishing the contours of that role. Stillwater presented
testimony only that, according to the head of the recording company—who only
occasionally came to recording sessions, and who was not offered as an expert—
Mathieson “carr[ied] out the duties of a record producer.” And because it is
undisputed that Mathieson was an inexperienced producer, to the extent that there
is some traditional role of a producer, there is less reason to think that Mathieson
comported with that role than there would be for an experienced producer.
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Accordingly, Stillwater has not adequately shown that Mathieson is entitled to any
sort of presumption of joint authorship.3
Because we conclude that Stillwater has failed to prove that Mathieson is a
co-author under the three factors discussed above, we do not reach Basilotta’s
other arguments pertaining to joint authorship or her statute-of-limitations
argument.
AFFIRMED.
3
Stillwater asserts that “the District Court found that Mathieson performed
all the responsibilities typically undertaken by the producer of a sound recording.”
But that assertion misstates the record. The district court only found that,
according to the head of the recording company, Mathieson performed those
responsibilities. And the court specifically noted that the company’s head only
“occasionally” observed Mathieson, and that he was not the most credible witness.
8