Collecting Royalties Indicative of Authorship, not Work for Hire

authorship circuit watch copyright work for hire

On August 21, 2019, the Court of Appeals for the Second Circuit ruled in an interesting example of what is deemed “work for hire,” as defined by the Copyright Act, 17 U.S.C. §201(b), in Morricone Music Inc. v. Bixio Music Group Ltd..[1]

Ennio Morricone is the late Italian composer of several musical film scores, which were commissioned by Bixio in the 1970s and 1980s in exchange for consideration of an upfront payment and royalties.  Morricone then assigned his rights in the scores, pursuant to the following:

You do hereby grant and transfer to us, exclusively, for the maximum total duration to permitted by the laws in force in each country in the world, and at the conditions established here below, all the rights of economic use, in any country in the world, with regard to the works.

Pursuant to 17 U.S.C. §203, Morricone, in 2012, sough to terminate the assignment after the 35 year statutory period in a declaratory judgment filed in the Southern District of New York.  The district court held that Morricone’s work was a work for hire, making it an exception to §203, and therefore holding that Morricone could not terminate the assignment.  Morricone appealed.

The Second Circuit panel, comprised of Judges Kearse, Jacobs, and Hall, with Judge Jacobs writing for a unanimous court, reversed.  Judge Jacobs noted differences between the U.S. and Italian “work for hire” definitions.  Under the U.S. Copyright Act’s §201(a), a work for hire:

the employer or other person for whom the work was prepared is considered the author for purposes of this title, and unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all the rights comprised in the copyright.

However, Article 44 of the Italian Copyright Code states:

The author of the subject matter, the author of the scenario, the composer of the music and the artistic director shall be considered joint-authors of a cinematographic work.

So, in other words, in the U.S., the employer-commissioner is considered the author for a “work for hire” scenario under §201(a), but in the Italy, the author remains a joint-author of the work under Italian Art. 44.  Further, 17 U.S.C. §101 requires in the U.S. that the author and employer-commissioner must “expressly agree in a written instrument signed by them” that the work will be a work for hire.  The assignment did not include such specific terms, as Judge Jacobs noted.  Additionally, the agreement made between Morricone and Bixio allowed Morricone the right to collect royalties.  Judge Jacobs posited that while not dispositive against the notion of “work for hire,” the royalties indicated that the parties did not contemplate a complete “stripping of [Morricone’s] rights in the scores.”

Therefore, the panel held that neither U.S. nor Italian law prevented termination of the assignment under §203.  The Second Circuit reversed and remanded the district court judgment.  Key takeaways here include the specific language requirement under §101 – if the work is to be deemed a work for hire by the parties, it must explicitly say so in the agreement document.  Second, copyright law is at its core jurisdictional in nature, which means any assignment or licensing scheme must contemplate all scenarios in any country specified in the agreement.  The broad language in the Morricone-Bixio agreement included every country in the world, and therefore, to Bixio’s detriment, the assignment of the copyright interests in the scores could be effectively challenged depending on the country law.  Third, and while not an issue in this decision, but Morricone still retained his moral rights to the scores, as allowed under Italian law.  Moral rights, of course, are not specific right to authors under U.S. Copyright law (although there are some bare-bones moral rights under the Visual Artists Rights Act (VARA) codified as 17 U.S.C. §106(a)).

[1] ___F.3d___ (2nd Cir. 2019) (slip op.), reversing and remanding, Case No. 1:16-cv-08475-KBF (S.D.N.Y. Oct. 6, 2017).