Roger Miller Music, Inc. v. Sony/atv Publishing, LLC

RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
File Name: 12a0049p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
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ROGER MILLER MUSIC, INC.; MARY A.
Plaintiffs-Appellees, --
MILLER,
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No. 10-5363
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v.
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Defendant-Appellant. -
SONY/ATV PUBLISHING, LLC,
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Appeal from the United States District Court
for the Middle District of Tennessee at Nashville.
No. 04-01132—William J. Haynes, Jr., District Judge.
Argued: October 12, 2011
Decided and Filed: February 22, 2012
Before: MOORE and ROGERS, Circuit Judges; HOOD, District Judge.*
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COUNSEL
ARGUED: Barry I. Slotnick, LOEB & LOEB LLP, New York, New York, for
Appellant. John J. Griffin, Jr., KAY GRIFFIN ENKEMA & COLBERT, PLLC,
Nashville, Tennessee, for Appellees. ON BRIEF: Barry I. Slotnick, Jonathan N.
Strauss, Shelly Elimelekh, LOEB & LOEB LLP, New York, New York, Robert L.
Sullivan, LOEB & LOEB LLP, Nashville, Tennessee, for Appellant. John J. Griffin, Jr.,
KAY GRIFFIN ENKEMA & COLBERT, PLLC, Nashville, Tennessee, for Appellees.
*
The Honorable Joseph Hood, United States District Judge for the Eastern District of Kentucky,
sitting by designation.
1
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Sony/ATV Publishing LLC
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OPINION
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KAREN NELSON MOORE, Circuit Judge. Defendant-Appellant Sony/ATV
Publishing, LLC (“Sony”) appeals the district court’s judgment in favor of Plaintiffs-
Appellees Mary Miller and Roger Miller Music, Inc. (collectively, “RMMI”) on their
copyright infringement claim and the award of $903,349.17 in damages. Because the
Copyright Act makes clear that the renewal copyright vested with Roger Miller, and thus
with Sony as his assignee, we REVERSE the district court’s judgment and REMAND
with instructions to enter judgment in favor of Sony.
I. BACKGROUND
Famed singer and songwriter Roger Miller, best known for the hit song “King
of the Road,” assigned the original and renewal copyrights to his songs to Tree
Publishing Co. (Sony’s predecessor-in-interest) in a series of contracts in the 1960s. In
exchange for this assignment, Miller was entitled to receive royalty payments from the
use of his songs. Relevant to this litigation are the songs originally copyrighted in 1964,
for which the renewal copyright term began January 1, 1993.1
Sony filed applications to register the renewal copyrights for the 1964 songs with
the United States Copyright Office in January and April 1992 and subsequently
registered these copyrights. Miller died on October 25, 1992. In his will, he granted all
interests in his intellectual property to his wife, Mary; Mary Miller assigned these
interests to Roger Miller Music, Inc. Over the next twelve years, Sony continued to
exploit the 1964 songs and pay royalties to RMMI.
1
The 1964 songs include “King of the Road.” Miller’s other songs from that year are “Chug-A-
Lug,” “Dang Me,” “Feel of Me,” “Got Two Again,” “Less and Less,” “Squares Make the World Go
Round,” “Dern Ya,” “Chinese Dang Me,” “Do Wacka Do,” “Meadowgreen,” “It Happened Just That
Way,” “Australian Sheepherder,” “Hard-Headed Me,” “Love Is Not For Me,” “Reincarnation,” “Train of
Love,” “You Can’t Roller Skate In A Buffalo Herd,” “As Long As There’s A Shadow,” “I’ll Be
Somewhere,” “Our Hearts Will Play the Music,” “That’s The Way It’s Always Been,” “There I Go
Dreamin’ Again,” and “The Willow Weep.”
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In December 2004, RMMI brought suit against Sony for copyright infringement,
seeking damages and a declaration that RMMI was the owner of the renewal copyrights
to the songs Miller composed between 1958 and 1964. At this stage in the litigation,
Sony did not contend that it owned the renewal copyrights to the 1964 songs or dispute
RMMI’s contention that ownership vested in RMMI due to Miller’s death prior to the
start of the renewal term. The district court granted Sony’s motion for judgment on the
pleadings, holding that Sony owned the renewal copyrights to the 1958-1963 songs and
that it held an implied, non-exclusive license to exploit the 1964 songs based on
RMMI’s actions and inactions in accepting royalty payments without objection. Roger
Miller Music, Inc. v. Sony/ATV Publishing, LLC, No. 04-1132, 2005 WL 5351103, at *1
(M.D. Tenn. July 11, 2005) (RMMI I). Sony subsequently filed a motion to alter or
amend the judgment under Federal Rule of Civil Procedure 59(e), arguing that it owned
the renewal copyrights to the 1964 songs because it had applied to register them prior
to Miller’s death. The district court treated Sony’s previous position regarding the 1964
songs as a binding judicial admission and refused to hear Sony’s arguments on the issue.
Both parties appealed, and a previous panel of this court affirmed as to Sony’s
ownership of the copyrights to the 1958-1963 songs, but reversed the holding that
Sony’s previous statements regarding the 1964 songs constituted judicial admissions.
Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC, 477 F.3d 383, 391-95 (6th Cir.
2007) (RMMI II). We remanded for a determination of whether the district court should
hear arguments on ownership of the renewal copyrights to the 1964 songs.
On remand, the district court concluded that Sony did not own the renewal
copyrights, because Roger Miller had died prior to the vesting of the renewal rights and
assignees were not included in the list of statutory successors, and the court thus denied
Sony’s Rule 59(e) motion. The court incorporated its previous decision that Sony held
an implied license to exploit the 1964 songs, but nonetheless appointed a Special Master
to conduct an accounting of the infringement damages owed to RMMI. Sony objected
to the Special Master’s report on the grounds that Sony’s status as a licensee precluded
any liability for infringement. In response, the district court reversed its prior holding
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on the license issue and awarded RMMI $903,349.17 in damages. Roger Miller Music,
Inc. v. Sony/ATV Publishing, LLC, No. 04-1132, 2010 WL 1026980, at *3 (M.D. Tenn.
Mar. 18, 2010) (RMMI III).2 Sony timely appealed, arguing that it owned the renewal
copyrights to the 1964 songs and, alternatively, that the district court’s sua sponte
reversal of its previous holding on the license issue was both procedurally impermissible
and substantively incorrect.
II. ANALYSIS
A. Standard of Review
“‘A matter requiring statutory interpretation is a question of law,’” which we
review de novo. Roberts v. Hamer, 655 F.3d 578, 582 (6th Cir. 2011) (quoting United
States v. Brown, 639 F.3d 735, 737 (6th Cir. 2011)).
B. Copyright Infringement
This case presents an interstitial issue of copyright law. Miller’s assignment of
the renewal copyright would indisputably have been made effective if he had still been
living at the commencement of the renewal term on January 1, 1993. Equally
indisputable is that the assignment would have been rendered ineffective if Miller had
died before 1992. This case is before us because Miller was still living at the time in
1992 that his assignee applied to register the copyright, but Miller died before the start
of the renewal term. RMMI contends that Miller must have been living at the start of
the renewal term to effectuate his assignment to Sony, but Sony counters that Miller
needed to survive only until the time at which the application was filed. Sony is correct
that the Copyright Act supports the effectiveness of assignments in such circumstances.
2
The amount of infringement damages makes clear that, unlike Miller’s musical persona, the
owner of these copyrights would hardly be a “man of means by no means.”
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1. The Renewal Copyright
Under the Copyright Act, an artistic work has an original copyright term of
twenty-eight years followed by a renewal term of an additional sixty-seven years.
17 U.S.C. §§ 304(a)(1)(A), (a)(2)(B).3 A renewal copyright can be registered with the
U.S. Copyright Office at any point in the final year of the original term (the “renewal
year”), id. § 304(a)(3)(A)(i), or at any time within the renewal term itself,
id.§ 304(a)(3)(A)(ii); without registration, the copyright renews automatically at the start
of the renewal term, id. § 304(a)(3)(B).4
The Copyright Act provides that, if an application to register the renewal
copyright is filed within the renewal year, the renewal copyright “shall vest, upon the
beginning of such further term, in any person who is entitled under paragraph (1)(C) to
the renewal and extension of the copyright at the time the application is made.” Id.
§ 304(a)(2)(B)(i). If no application is filed, the renewal copyright “shall vest, upon the
beginning of such further term, in any person entitled under paragraph (1)(C), as of the
last day of the original term of copyright, to the renewal and extension of the copyright.”
Id. § 304(a)(2)(B)(ii).
Paragraph (1)(C) establishes a hierarchy of who is entitled to the renewal
copyright:
(i) the author of such work, if the author is still living,
(ii) the widow, widower, or children of the author, if the author is not
living,
3
The provisions of the Copyright Act discussed herein apply to works originally copyrighted
between January 1, 1964 and December 31, 1977, and thus to the 1964 songs at issue in this case. These
provisions were enacted as part of the Copyright Renewal Act of 1992.
4
Prior to 1992, failure to register a renewal copyright prior to the start of the renewal term resulted
in the work’s entering the public domain. See Pub. L. No. 94-553, § 304(a), 90 Stat. 2541 (1976)
(amended 1992) (“[I]n default of the registration of such application for renewal and extension, the
copyright in any work shall terminate at the expiration of twenty-eight years from the date copyright was
originally secured.”). Although the 1992 Act provided for automatic renewal, it also contained a variety
of incentives for voluntary registration during the renewal year. See H.R. Rep. No. 102-379(I), at 11-14
(1991), reprinted in 1992 U.S.C.C.A.N. 166, 171-74 (“Title I automatically renews all subsisting
copyrights but, at the same time, provides a strong inducement to register.”).
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(iii) the author’s executors, if such author, widow, widower, or children
are not living, or
(iv) the author’s next of kin, in the absence of a will of the author.
Id. § 304(a)(1)(C).
The original and renewal copyrights are distinct legal interests. An author who
sells the original copyright to his work thus has a second chance to claim ownership at
the end of the original term. This system protects an author who was in a weak
bargaining position at the outset but whose work ultimately proved successful. Stewart
v. Abend, 495 U.S. 207, 218-19 (1990). The statutory succession provision likewise
provides a deceased author’s family with a new chance to receive remuneration for a
valuable creation. Id. at 218.
2. Assignments
Notwithstanding this author-protecting policy, an author can assign his interest
in the renewal copyright, either before or after the start of the renewal term. Miller
Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373, 375 (1960) (citing Fred Fisher
Music Co. v. M. Witmark & Sons, 318 U.S. 643 (1943)); Fred Fisher Music Co., 318
U.S. at 647, 655-56. However, the author has only a contingency interest in the renewal,
which is all he can assign, “until the renewal period arrives.” Miller Music Corp., 362
U.S. at 375-78. If the author dies prior to that point, ownership of the renewal copyright
passes to the statutory successors, regardless of whether the author had otherwise
previously assigned or devised it. Id. at 375. This result follows from the fact that, as
in other contractual relationships, a copyright assignee stands in the shoes of the assignor
and thus is entitled to the copyright only if the assigning author would otherwise be
entitled to it. See id. at 377-78; see also Plumb v. Fluid Pump Serv., Inc., 124 F.3d 849,
864 (7th Cir. 1997) (“‘[E]lementary contract law provides that upon a valid and
unqualified assignment the assignee stands in the shoes of the assignor and assumes the
same rights, title and interest possessed by the assignor.’” (quoting Moutsopoulos v. Am.
Mut. Ins. Co., 607 F.2d 1185, 1189 (7th Cir. 1979))).
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Neither Fred Fisher Music nor Miller Music identified the point at which a pre-
renewal-term assignment of a renewal copyright is no longer contingent and is therefore
guaranteed to vest in the assignee. The Court did not define “renewal period” or
otherwise specify whether an assignment sheds its contingent status upon
commencement of the renewal year, registration, or commencement of the renewal term.
See Stewart, 495 U.S. at 220 n.2 (recognizing the open question). Because the author
in Miller Music had died more than one year before the termination of the original term,
and thus outside of any potential definition of renewal period, the need for further clarity
did not arise. See Miller Music Corp. v. Charles N. Daniels, Inc., 158 F. Supp. 188, 190
(S.D.N.Y. 1957).
3. The Statutory Language Supports Sony
Despite its somewhat convoluted syntax, the statutory language enacted in 1992
provides an answer. An author is “entitled under paragraph (1)(C) to the renewal and
extension of the copyright,” 17 U.S.C. § 304(a)(2)(B)(i), if he is still living, see id.§ 304(a)(1)(C)(i). The renewal copyright vests in any party entitled to it “at the time the
application is made.” Id. § 304(a)(2)(B)(i). The author (and therefore any of his
assignees) thus secures an interest in the renewal copyright so long as he is still living
at the time of application for renewal with the Copyright Office. This interest is not lost
even if the author subsequently dies prior to the commencement of the renewal term.
The House Judiciary Committee Report for the 1992 Act confirms this reading,
explaining that “[r]egistration during the final year would assure the author or other
claimant that his or her right to the renewal term vested on registration, even if he or she
died later that year.” H. Rep. 102-379(I), at 13.5
5
The Committee’s reference to the right “vesting” at the time of registration is not necessarily
inconsistent with the Act’s statement that the renewal copyright “shall vest, upon the beginning of such
further term,” 17 U.S.C. § 304(a)(2)(B)(i). The word “vest” can refer to several different concepts: an
individual’s interest may vest at the time he gains an indefeasible right to something or at the time he is
actually eligible to receive it. Professor Goldstein recognizes the operation of these varying meanings in
the renewal copyright context. See 1 Goldstein on Copyright § 6.3.1.2, at 6:24 n.22 (3d ed. 2010)
(explaining that, if an assignee or other claimant registers the renewal copyright during the renewal year,
“the right to the renewal vests indefeasibly, in interest, if not in possession, at the time the application is
made”).
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Roger Miller was entitled to the renewal copyright because he was living at the
time the application for registration was made. Sony was in turn entitled as Miller’s
assignee, and thus took ownership at the time the interest vested on January 1, 1993.6
The fact that the interest in the renewal copyright vests “upon the beginning of
such further term,” 17 U.S.C. § 304(a)(2)(B)(i), does not dictate a contrary result. The
date of vesting is not dispositive as to who owns the copyright, as the 1992 Act
“separate[d] the inquiry of who is entitled to the renewal rights from the inquiry of who
is alive when renewal vests.” Dimensional Music Publ’g, 435 F. Supp. 2d at 457; see
also 3 Nimmer on Copyright § 9.05(C)(2) (describing the two concepts as “uncoupled”).
Instead, the date of the renewal application determines entitlement to ownership.
Accordingly, a party can become entitled to ownership of the renewal copyright prior
to the time it actually vests.7
The district court (and RMMI) cited language in Broadcast Music, Inc. v. Roger
Miller Music, Inc., 396 F.3d 762 (6th Cir. 2005), and the prior panel’s opinion in this
case as support for its conclusion that an assignee has no interest in a renewal copyright
if the assigning author dies prior to vesting. In both cases, this language is dicta. The
issue in Broadcast Music was whether an author’s widow and children take equal shares
in the renewal interest upon statutory succession; the opinion mentioned vesting only in
the course of an overview of the law regarding renewal copyrights. Id. at 763-64, 768-
69. Moreover, Broadcast Music cited Miller Music, which, as described above, did not
6
The one other case to address this issue under the 1992 Act also held in favor of the assignee.
Dimensional Music Publ’g, LLC v. Kersey, 435 F. Supp. 2d 452, 460 (E.D. Pa. 2006). Nimmer’s copyright
treatise described Dimensional Music Publishing as a “textbook case” of the operation of § 304(a)(2)(B)(i).
3 Nimmer on Copyright § 9.05(C)(2). Courts were split on the issue under the 1976 Act, compare
Frederick Music Co. v. Sickler, 708 F. Supp. 587, 589 (S.D.N.Y. 1989) (author must survive until
registration in the renewal year), with Marascalco v. Fantasy, Inc., 953 F.2d 469, 476 (9th Cir. 1991)
(author must survive until start of the renewal term), but the 1976 Act did not contain the “at the time the
application is made” language.
7
The scenario of a party’s gaining an indefeasible right to something prior to actually being
eligible to receive it is hardly unusual, and is often presented, for example, in pension law. In ERISA
plans, “an employee’s right to his normal retirement benefit is nonforfeitable upon the attainment of normal
retirement age,” even though the benefits are not paid until he actually retires. 29 U.S.C. § 1053(a); see
also Calabro v. City of Omaha, 531 N.W.2d 541, 550 (Neb. 1995) (holding that “an employee’s protected
interest in a pension vested before he or she became eligible to collect the pension”).
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address this issue and, of course, was decided before the 1992 amendments. RMMI II
remanded to the district court on the very issue of Sony’s ownership interest in the 1964
songs and thus did not rule on that issue. 477 F.3d at 395.
4. RMMI’s Position Is Inconsistent with the Statute
If Congress intended to condition all assignments on the author’s survival to the
start of the renewal term, it would not have split § 304(a)(2)(B) into two subparagraphs;
ownership in all cases would be determined “as of the last day of the original term of
copyright,” 17 U.S.C. § 304(a)(2)(B)(ii). Under this interpretation, the “at the time the
application is made” language in § 304(a)(2)(B)(i) would be meaningless. In accordance
with the rules of statutory construction, however, we “must ‘giv[e] effect to each word’”
and do not interpret a statute in a way that renders a provision “‘meaningless or
superfluous.’” Nat’l Air Traffic Controllers Ass’n v. Sec’y of Dep’t of Transp., 654 F.3d
654, 657 (6th Cir. 2011) (quoting Menuskin v. Williams, 145 F.3d 755, 768 (6th Cir.
1998)). Instead, the two subparagraphs articulate different rules for two different sets
of circumstances; only if no application is filed is ownership determined “as of the last
day of the original term of copyright.”
RMMI’s reading of § 304(a)(2)(B)(i) as a provision that “simply freezes the
eligible statutory successors so that the only successors who may be entitled to the
renewal interest on the first day of the renewal period are those who qualified as
statutory successors at the time the application was filed,” Appellee Br. at 9, finds no
support in caselaw or commentary. More damning is RMMI’s failure to explain why the
then-living Roger Miller would not be included in the closed class of statutory
successors. A living author is the first person entitled to the renewal copyright under
§ 304(a)(1)(C). If the class closes at the time of application, and the author is alive at
the time of application, then the author is included within the closed class and the
copyright vests in him at the start of the renewal term. The renewal copyright passes to
the author’s assignee, even if the author has died in between the filing of the application
and the renewal term. By describing § 304(a)(1)(C) as “expressly limited to the author’s
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relatives” and thus rejecting Sony’s argument as an attempt “to amend Section
304(a)(1)(C) to include an author’s assignees,” the district court made a similar error.
RMMI III, 2010 WL 1026980, at *2.
Nor does the statute support RMMI’s contention that the statutory successors
hold concurrent contingent interests along with the author’s assignees from the time of
application until the commencement of the renewal term and thereupon receive sole
ownership of the copyright if the author has died in the interim. The statement in
Broadcast Music that “renewal copyright interests can be held simultaneously by
numerous parties” was made in the context of a dispute between an author’s widow and
child, both of whom occupy the same tier in the statutory successor hierarchy. 396 F.3d
at 768. By contrast, a living author is the sole member of the top tier in that hierarchy.
A spouse is not “entitled under paragraph (1)(C),” 17 U.S.C. § 304(a)(2)(B)(i), if the
author is still living, and thus does not share the renewal interest with him.
Because Roger Miller was “entitled under paragraph (1)(C) to the renewal and
extension of the copyright at the time the application [wa]s made,” 17 U.S.C.
§ 304(a)(2)(B)(i), the renewal interest vested in him at the commencement of the
renewal period. And because he had previously made an otherwise valid assignment of
the renewal interest to Sony, the copyright thus vested in Sony.8
III. CONCLUSION
Because Sony owns the renewal copyrights to the 1964 songs as the assignee of
an author who was living at the time of the application for renewal registration, we
REVERSE the judgment of the district court holding Sony liable for copyright
infringement and awarding damages to RMMI. We REMAND for entry of judgment in
favor of Sony.
8
Because we decide that Sony is the owner of the renewal copyrights to the 1964 songs, we need
not address the other issues presented in this appeal.