 (310)553‐8833
 firm@mcpherson-llp.com
Entertainment, Sports & Business Litigation
Crisis Management & Coordination
Edwin F. McPherson
Pierre B. Pine
Marina A. Borawick
Raffaella Cesana
Catherine A. Cavella
Lucille G. Bjorklund
Composer Loses Bid To Terminate Copyright Assignment In Six Film Scores, After The Southern District of New York Found Them To Be "Works for Hire" Under Italian Law
January 11, 2018 | categories: Blog
On October 6, 2017, the United States District Court Southern District of New York in Ennio Morricone Music Inc. v. Bixio Music Group Ltd., denied plaintiff Ennio Morricone Music Inc.'s motion for summary judgment, which sought a declaratory judgment that it is the sole owner of the copyrights to several film scores, and could terminate an assignment of those copyrights pursuant to Section 203 of the Copyright Act. The Court instead granted summary judgment in favor of defendant, Bixio Music Group Ltd ("Bixio"), and found that "the works in question were specifically commissioned and constitute works for hire," under Italian law, and thus, fall within an exception to Section 203, which prohibits the termination of a copyright assignment by an author when the work was "made for hire."
Ennio Morricone ("Morricone") is a renowned Italian composer, who recently received an Academy Award for his score to Quentin Tarantino's film, The Hateful Eight. This case involved six film scores composed by Morricone in the late 1970s and early 1980s. Morricone and Bixio entered into a number of written agreements requiring Morricone to compose a musical score, for each of which Bixio entered into a separate agreement with a film producer to license each score composed by Morricone for use in a film.
The Court decided (and both parties agreed) that Italian law should be applied, as it is "the law of the state with the most significant relationship to the property and parties." However, because Italian law does not provide a specific definition of a "work for hire," the Court was forced to rely upon declarations from conflicting Italian law experts. While plaintiff's expert's opined that "Italian law 'rules out in principle' that a composer's work can ever be a 'work for hire,'" the Court did not find his opinion to be persuasive. Although the Court agreed with plaintiff's expert that Italian copyright laws "do typically grant the original copyright to a work to its creator," it noted that "this does not prevent the assignment of those rights."
In contrast, defendant's expert likened the concept of "work for hire" to a "commissioned" work, a term with legal significance in Italy. Defendant's expert opined that under Italian law, similar to U.S. law, a work is "commissioned" if, among other things, "it was created in response to an order from a publisher or producer, and if the contract governing its creation assigns full rights to the publisher or producer who requested the work." The Court agreed with defendant's expert, and concluded that "[t]he six musical scores at issue [were] indeed commissioned works under Italian law … [and] the legal effect is the same as the American equivalent of work for hire."
In making its decision the Court utilized a "work for hire" type analysis of the subject agreements, and noted that each agreement between Bixio and Morricone "commissions a score to match an existing film, and it lists instructions and deadlines that Morricone was to abide by," including requirements that the recordings "take place in the city of Rome, in the studios and on the dates that . . . shall be set by reciprocal agreement [with Bixio]." The Court further noted that "[m]ost significantly, the contract[s] explicitly require[d] Morricone to 'grant and transfer to [Bixio], exclusively, for the maximum total duration permitted by the laws in force in each country in the world, . . . all the rights of economic use, in any country in the world, with regard to the works." Thus, the Court held that "plaintiff's purported termination of the copyright assignment has no legal effect."
CONCLUSION – Although the term "work for hire" is not defined under Italian law, the Court did not shy away from applying the distinctive U.S. "work for hire" principles when determining copyright ownership of the subject foreign works. Attorneys who draft and/or negotiate contracts on behalf of foreign authors and artists in connection with foreign works, should beware that the terms of such contracts may be interpreted by U.S. courts, even when applying foreign law, in a manner that could strip the individual authors or creators of their copyright ownership, and deny them their termination rights.
-By Pierre B. Pine
McPHERSON LLP IN THE NEWS
McPherson LLP Celebrates Appellate Victory For Client Amy Lee/Evanescence, As Court of Appeal Affirms Attorneys' Fee/Cost Award Of $1.04 Million Against Former Manager
Respondent's Brief filed in the never-ending legal saga (now on appeal) between McPherson client, Evanescence, and former manager Andy Lurie/110 Management (hit for over $1 Million in attorneys' fees and costs).
McPherson LLP Prevails On Motion For Partial Summary Judgment Before The Central District of California.
McPherson LLP Obtains Appellate Court Victory
McPherson LLP Submits Amicus Brief In Support Of Led Zeppelin In The Ninth Circuit Court of Appeals
McPherson LLP Represents At The 2018 Entertainment Lawyer of the Year Celebration
Pollstar Interviews Ed McPherson on Block-Booking Dispute for Ozzy's Last Tour
The Daily Telegraph Interviews Ed McPherson on Morality Clauses in the Wake of Weinstein
Ed McPherson Featured in Pollstar: "Are Festivals Going Too Far In Their Radius Clauses?"
Appellate Court Puts Stop to Fox's Attempts To Bully 72-Year-Old Man To Cease His Breach of Contract Lawsuit
'Friday the 13th' Dispute Provides 'Work-For-Hire' Lessons
Crushing Creativity: The Blurred Lines Case and Its Aftermath
Depp Ruling Probably Won't End The Art of the (Handshake) Deal
SOME THEY DO, AND SOME THEY DON'T – LITIGATION PRIVILEGE FOR PRE-LITIGATION DEMAND LETTERS IN CALIFORNIA
PERSPECTIVE: When Is A Demand Letter Considered Just a "Bluff"?
Artists: "Blurred Lines" Verdict Hurts Industry
ENTERTAINERS BEWARE: You May Have Less Insurance Coverage Than You Think
PERSPECTIVE: TAA Violation For Record Producer Deal
You're Terminated! Termination and Reversion of Copyright Grants and the Termination Gap Dilemma
Is The California Legislature Listening?
INDUSTRY CASES OF NOTE
The Ninth Circuit Holds That "Words" And "Short Phrases" Are Not Copyrightable, In Affirming Summary Judgment Ruling Against Alisa Apps In "Love Me Again" Copyright Lawsuit
Katy Perry Loses Summary Judgment In "Dark Horse" Copyright Infringement Case, As Court Decides That Commercial Exploitation Not Necessary To Show "Widespread Dissemination" For Purposes of Proving "Access"
Yes, You Can Have Your Cake, And Eat It Too: Successfully Voided Contracts Still Allow For The Recovery of Contractual Attorney's Fees
Supreme Court To Resolve Split Among Circuits Regarding Requirement Of Copyright Registration
Concert Security in the Wake of Las Vegas and Other Tragedies
Harvey Keitel Learns The Hard Way That A Term Sheet And Request For A "Firm And Binding Offer" Do Not Constitute A Binding Agreement
© McPherson LLP 2019
1801 Century Park East, 24th Floor