Statutory Termination of Transfers/“Recapturing Copyrights”: Termination Rights and Sound Recordings

Since the enactment of the Copyright Act, many songwriters, composers and heirs have successfully invoked the statutory termination provisions. However, due to the fact that sound recordings did not come within the scope of federal copyright laws until February 15, 1972, until recently there has been little consideration of the application of the termination provisions to grants of rights in sound recordings.

Which Termination Provisions are Available for Sound Recordings?

Pre-1978 grants of rights in sound recordings fixed on or after February 15, 1972 but before January 1, 1978 may be subject to termination under Section 304(c), provided the sound recording was not created as a work made for hire. Post-1977 grants of rights in sound recordings fixed on or after February 15, 1972 may be subject to termination under Section 203 provided (i) the grant was executed by the author of the sound recording and (ii) the author did not create the sound recording as a work made for hire.

Who Is Entitled to Terminate A Grant of Rights in a Sound Recording?

As discussed above, the termination right is owned by the author of a work, or the statutory heirs of a deceased author. However, the identity of the author of a sound recording is not defined in the Copyright Act, nor has it been the subject of judicial interpretation. Several different approaches have been posed for identifying the author(s) of a sound recording. One position is that the “author” of a sound recording is the artist or artists whose performance is featured thereon, or, in the absence of a featured artist, the producer of the sound recording. A second opinion is that the authors of a sound recording include both the featured artist(s) and the featured producer. A third theory is that the authors of a sound recording include every person (and possibly entity) that had anything to do with the creation of that sound recording, which would include mixers, background singers and session musicians in addition to featured artists and producers. Note that attributing authorship to every person connected to the creation of a sound recording would make it virtually impossible to determine the duration of copyright protection for post-1977 sound recordings because it would necessitate tracking the dates of death of the entire class of potential authors. Further, this position would make it difficult, if not impossible, to determine all potential termination rights claimants and could ultimately result in numerous “owners” of non-exclusive rights in the sound recording.

While attributing authorship in a sound recording to the featured artist(s) or, in the absence of a featured artist, the featured producer would seem to support a result that is consistent with both industry reality and Congressional intent; until this matter is settled through legislation or litigation it will continue to be a subject of debate. In the interim, featured artists and the heirs of deceased artists should assert their termination rights in a timely manner by serving notice of termination in accordance with the rules set forth in the Copyright Act.

Are Sound Recordings Works Made For Hire?

The grantees of rights in sound recordings (typically, the record labels) frequently take the position that performing artists render their services as employees for hire of the record label and that the grants are outside the scope of the statutory termination provisions. Indeed, the agreements entered into by performing artists and record labels often expressly state that the artist is rendering services as an employee for hire. However, this statement alone is not dispositive. Both the agreements and the artist-record label relationship must be analyzed in order to determine if the artist rendered services as an employee for hire.

Under such an analysis, a pre-1978 recording agreement will constitute work made for hire agreement only if it is found that the artist rendered services as an employee within the scope of his or her employment. Post-1977 recording agreements must be evaluated under the two-prong work made for hire test proscribed in the Copyright Act – (i) did the artist render services as an employee within the scope of his/her employment?; or (ii) were the artist’s services specially commissioned as a work for hire for inclusion in one of the nine categories of works enumerated in the Copyright Act?

Did the Artist Render Services as an Employee Within the Scope of His/Her Employment?

Each performing artist – record label relationship must be examined through the lens of the agency criteria to determine whether in fact the artist was the employee of the label at the time the sound recording was made. In most cases, the artist – record label relationship will not be found to create an employee-employer relationship. Importantly, it is rare that a record label will withhold taxes from the monies paid to the artist, or provide the artist with health insurance or other benefits. Note, however, that in cases in which an artist renders services through his or her loan-out corporation, the relationship between the artist and the loan-out company may indeed be deemed to be an employer-employee relationship. In these cases, the loan-out agreement may be enough to prevent the artist from successfully terminating the grant of rights to the record label (as successor in interest to the loan-out company).

Were the Artist’s Services Expressly Ordered or Commissioned As a Work Made for Hire for Inclusion in One of the Nine Statutorily Designated Categories?

At the outset, it is important to note that sound recordings are not specifically included in the nine categories of commissioned works enumerated in the Copyright Act. In 1999, Congress amended the Copyright Act to add sound recordings as a category of commissioned works as part of an unrelated bill and after virtually no debate.1 The amendment was repealed the following year “without prejudice” to the debate of whether sound recordings may or may not be deemed works made for hire.2 Courts have rejected the argument that a sound recording falls within the category of motion picture or other audiovisual work, thus ruling out one of the nine categories.3 Services rendered by a performing artist are clearly not commissioned for use in six other categories – translation, supplementary work, instructional text, test, answer material for a test, or an atlas. That leaves two possible applicable categories: contributions to collective works and compilations.

Do the Artist’s Services Constitute A Contribution to a Collective Work or a Compilation?

The Copyright Act defines a collective work as “a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”4 A compilation is defined as “a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship … [including] collective works.”5

One can certainly envision situations in which a sound recording will fall within the definition of a compilation (for example, a holiday album comprised of pre-existing master recordings of individual compositions by different artists). However, the record label position is that ALL sound recordings are collective works or compilations, because there are multiple separate contributions made in the creation of a sound recording, and/or because the record label may rearrange the master recordings of individual compositions delivered by the artist. According to this position, if the performing artist agreed in writing that his/her services were being provided as an employee for hire, then the resulting sound recording would be a work made for hire and the grant of rights therein would not be subject to termination.

This position is arguably going outside the plain meaning of the statute. While multiple people may work on the creation of a sound recording, the work that they provide does not necessarily rise to the level of an original work of authorship. The fact that the record label may rearrange the order of compositions on a recording, or even choose to eliminate compositions, no more renders the sound recording a compilation than does the fact that a book publisher edits an author’s novel or rearranges chapters in a book. Finally, with the growing trend toward the digital release of single-song sound recordings, it will be increasingly more difficult to find that a compilation exists.

Conclusion

Whether or not an artist’s grant of rights in a sound recording is subject to termination is currently the subject of great debate. Opinion is divided both as to who is entitled to claim authorship of a sound recording, and as to whether an artist’s contribution to a sound recording constitutes that of an employee for hire. It is likely that this debate will continue until resolved by a clarifying amendment to the Copyright Act or a ruling of the Supreme Court. In the interim, it is advisable for artists with a colorable claim of authorship to serve notices of termination in a timely manner, so as not lose the opportunity by reason of the applicable notice window closing before notice is served.

Copyright © 2012 by Lisa A. Alter, All Rights Reserved.
Third Edition. Lisa A. Alter, Esq.

Show 5 footnotes

  1. Intellectual Property and Communication Omnibus Reform Act of 1999, Pub. L. 106-113 §1000(a)(9), 113 Stat. 1501 (repealed 2000).
  2. 146 Cong. Rec. 7,771 (2000); Work Made for Hire and Copyright Corrections Act of 2000, Pub. L. No. 106-379, 114 Stat. 1444 (codified as amended at 17 U.S.C. §101 (2000)).
  3. See, e.g. Lulirama Ltd. v. Axcess Broadcast Services, Inc., 128 F.3d 872 (5th Cir. 1997).
  4. 17 U.S.C. §101.
  5. 17 U.S.C. §101.