Fifty-Six Hope Road Music Ltd. v. UMG Recordings, Inc.

In copyright infringement action relating to several Bob Marley recordings, court holds that the recordings are works made for hire and that defendant record company owns the renewal copyrights rather than plaintiffs who are heirs of Bob Marley.

Plaintiffs are the adult heirs of Bob Marley who died in 1981. Plaintiffs filed suit for, among other things, an accounting and a declaration that they own the renewal copyrights in several Bob Marley records issued by Island Records, predecessor-in-interest to defendant UMG Recordings. Plaintiffs alleged that the renewal copyrights in the pre-1978 recordings reverted to them under the 1909 Copyright Act when Marley died, before the renewal term began. UMG argued that it, rather than Bob Marely, is the legal author of the recordings, because they are “works made for hire” and UMG timely registered the renewal copyrights.

The court used the Second Circuit “instance and expense” test for determining whether a work is made for hire under the 1909 Copyright Act: “a work is made at the hiring party’s ‘instance and expense’ when the employer induces the creation of the work and has the right to direct and supervise the manner in which the work is carried out.” The right to direct and supervise the manner in which work is created not never be exercised. The court described Second Circuit jurisprudence concerning the status of commissioned works under the 1909 Act as having created “an almost irrebuttable presumption that any person who paid another to create a copyrightable work was the statutory ‘author’ under the ‘work for hire’ doctrine.”

The court held that the recordings are works made for hire, relying on the plain language of the recording agreements that said Bob Marley was obligated to produce “sufficient acceptable recordings” and to “attend at such places and times as [Island] shall reasonably require and shall render to the best of his skill and ability to the satisfaction of [Island] such performances . . . as [Island] shall elect.”

The court also noted that Island was responsible for the expense of creating the sound recordings because the agreements provided that Island would pay Bob Marley certain advances against royalties for the creation of the recordings. The plaintiffs argued that Marley, not Island, was ultimately responsible for paying the expenses for the sound recordings, but the court stated that, while it is true that “where the creator of a work receives royalties as payment, that method of payment weighs against finding a work-for-hire relationship,” the absence of a fixed salary is never conclusive. “The fact that Island paid Bob Marley advances against royalties for the creation of the Sound Recordings, combined with the fact that Island advanced the recording costs for the albums that would only be recouped if the albums were successful, is sufficient to satisfy the expense prong of the instance and expense test.”

Because the recordings were works for hire, UMG is presumed to be the statutory author under the 1909 Act. While this presumption can be overcome by evidence of an agreement to the contrary, the court held that the plaintiffs failed to present evidence of such an agreement. The court rejected the plaintiffs’ argument that Marley exercised artistic control over the recording process. “The fact that Marley may have exercised artistic control over the recording process, however, is legally irrelevant; what is dispositive is that Island had the contractual right to accept, reject, modify, and otherwise control the creation of the Sound Recordings.” The court denied plaintiffs’ motion for partial summary judgment and granted defendant’s motion for partial summary judgment on the issue of ownership of the renewal copyrights, and denied plaintiffs’ motion for summary judgment on the issue of an accounting of royalties because the royalty provisions in the contracts are ambiguous.