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IP/Entertainment Case Law Updates

Ennio Morricone Music Inc. v. Bixio Music Group Ltd.

In dispute over ownership of Italian composer’s film scores, district court rules that composer’s company has no termination rights pursuant to Section 203 of the Copyright Act because, under Italian law, scores were “works made for hire” for defendant music publisher and thus not subject to termination.

Ennio Morricone is a celebrated Italian composer known for composing scores for film and television. In the late 1970s and early 1980s, Morricone entered into several agreements with the defendant, Italian music publisher Edizioni Musicali Bixio, in which Morricone agreed to compose musical scores for various films, and transferred to Bixio “all the rights of economic use, in any country in the world” as to the scores. As publisher, Bixio entered into license agreements with the filmmakers for the use of the scores that Morricone composed.  

The plaintiff, the corporate assignee of Morricone’s alleged copyrights in the film scores, commenced the action seeking a declaration that it is the sole owner of the copyrights and may terminate the copyright transfers to Bixio pursuant to Section 203 of the Copyright Act. Both parties moved for summary judgment. Because works for hire are specifically excluded from the reach of Section 203, the principal question before the court was whether the film scores constitute works for hire under Italian law.

As the definition of “works made for hire” is different in Italy and the United States, the court first addressed the choice-of-law issue. Reasoning that because the contracts at issue were “formed in Italy by Italian nationals,” the court held that Italy was the jurisdiction with the most significant connection to the property and the dispute, and therefore Italian law applied to the question of whether the works were made for hire.

The parties agreed that the film scores were “commissioned works” — a definition with “legal significance” in Italy — but disputed whether the fact that the works were commissioned means that they constitute works for hire under Italian law. The parties’ dueling experts presented arguments on the application of Italian law. Bixio’s expert, Professor Rescigno, argued that works for hire in the U.S. are completely analogous to Italian “commissioned works,” explaining that a work is “commissioned” under Italian law when it is created in response to a music publisher or producer’s “order” and the contract governing the creation of the work assigns all rights in that work to the party that requested it. Because Morricone composed the works after entering into a contract to do so with Bixio, Professor Rescigno explained that the scores are “commissioned works” under Italian law.

Plaintiff’s expert, Professor Ricolfi, did not dispute that the works were “commissioned” but instead argued that, under Italian law, a composer’s work can never be a “work for hire” because Italian authors always retain the right to “separate compensation” as well as moral rights. These include a right of attribution and a right to be consulted about any adaptations to the score.

Finding Professor Rescigno to be “more persuasive,” the court concluded that the works were “commissioned” and that the “legal effect,” according to Professor Rescigno’s formulation, is the same as the effect of a work for hire in the U.S. First, the court reasoned, the contracts that Bixio entered into with the filmmakers conferred “the role of music producer” to Bixio, requiring Bixio to produce the soundtrack and stating that the soundtrack would be Bixio’s “absolute property.” Second, the contracts between Morricone and Bixio provided that Bixio was commissioning a score for an existing film, that Morricone must comply with certain instructions and deadlines, and that Bixio retained the exclusive right to “use the works to produce the recordings thereof.” Third, the contracts between Morricone and Bixio expressly required Morricone to transfer to Bixio “all rights of economic use” of the works, in any country, for the maximum time permitted. Finally, the court reasoned that the contracts “implicitly” provided that Bixio and the filmmakers retain the right not to use Morricone’s scores without incurring liability.  

The court rejected plaintiff’s arguments that its retention of “moral rights” under Italian law was dispositive, explaining that “moral rights are irrelevant” because they are separate from “economic exploitation rights.” The economic rights, the court explained, are “the only rights at issue in this case.” The court reasoned that, in any event, because various articles of Italian copyright law provide that copyrights can vest with someone who is not the original creator of a work, Italy must recognize a work for hire doctrine.

The court thus concluded that the film scores are works for hire under Italian law and the plaintiff therefore had no rights of termination under Section 203 of the Copyright Act. Accordingly, the court denied the plaintiff’s motion for summary judgment and granted summary judgment in favor of Bixio, terminating the action.

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