There's Hole in Your Opinion, Partner

Hank Williams Sr. left a legacy befitting a great musician: enough classic recordings to fill box sets that can be reshuffled and sold anew every holiday season, illegitimate children who can tie up the estate in litigation for years, and undiscovered live recordings whose chain of title is as tortured as James Frey and Doubleday's relationship to the truth. A week ago, a Tennessee state appellate court issued an opinion that addresses this final attribute of greatness, Polygram Records, Inc. v. Legacy Enterntainment Group, LLC., although the court's reasoning is staggeringly bad.

In 1947-1953, Williams signed an exclusive services contract with Polygram's predecessor, MGM Records, "for the purpose of making phonograph records." During the same time period, Williams and his band, The Drifting Cowboys, were frequent visitors on Nashville's WSM Radio's "Mother's Best Flour" program. When they performed live at the station, WSM made, for its own purposes, recordings. When the Boys in the Band were on the road, they made their own pre-recorded performances for WSM, which WSM then broadcast. Neither WSM nor Williams ever released the recordings and Williams never had possession of them.

In the 1960s, WSM moved its offices. Les Leverett, a WSM photographer, was going through the trash bins at the time and came upon the (acetate) recordings. WSM let him keep them. He took them home and did nothing. In 1982, the late Hillous Butrum, one of the Drifting Cowboys, discovered that Leverett had the recordings and bought whatever rights Leverett had in them, in exchange for giving Leverett 40% of all monies earned from their exploitation. Compact discs were just coming out and Butrum began to do a transfer, cleaned up problem spots, and added new music and voice overs. He never followed through on releasing the recordings, and in 1997 sold his rights to defendant Legacy. Polygram learned of Legacy's plan to release the recordings and after unsuccessful negotiations, sued. Hank Willams Jr. and Jett Williams intervened and claimed they were the copyright owners. The court of appeals affirmed the trial court judgment for Jr. and Jett.

The court's opinion is full of puns on the titles of Willams' songs (as the title of this blog is a dig at the opinion), which would be less grating if the opinion was "sound;" alas, it isn't. Polygram's claim was the easiest to dispose of, and here the court got it right. Polygram's claim (at least as explained in the opinion) was contractual, based on the services contract. The appellate court agreed with the trial court that Polygram's contract didn't cover the recordings that occurred as an adjunct to the WSM performances, but even if it did, how that would vest copyright in Polygram is not explained, and in any event, Polygram's claim could not encompass Butrum's later derivative authorship.

Legacy certainly had a claim to Butrum's derivative authorship, but that authorship would be infringing and any registration invalid unless it was done with the permission of the original rights holder of the 1950s acetate recordings. Legacy traced rights in those recordings to Leverett, who of course, had to trace his rights to WSM letting him take the acetates from the trash bin, and to WSM originally having the rights. So did WSM or someone else have rights in the original recordings?

The court held that Jr. and Jett did, ultimately dismissing Polygram and Legacy's claims: with their claims dismissed, the court held no one else had standing to challenge Jr. and Jett, who won, therefore, by default. As unsatisfactory as this is, how the court got to dismissing Legacy's claims is even more unsatisfactory. To begin with, there is the question, never addressed, of WSM's rights as the producer of the sound recordings: why wasn't this enough for at least joint authorship? And in a pre-1972 sound recording era, it might even have been enough, in some jurisdictions under some facts, for sole authorship. But certainly joint authorship represented a solid claim for WSM (and, by the way, also for Butrum, who could have conveyed his proportional interest to Legacy if he performed on the recordings).

Whether that resulted in Leverett gaining rights when WSM let him take the acetates is a different question. Here, the court referred to federal copyright law, which as embodied in Section 202, makes clear that transfer of the physical embodiment does not transfer copyright rights. But this doesn't mean the same answer is required under state law for pre-1972 sound recordings. In some jurisdictions, like New York, the owner of the master will usually own intangible rights. WSM could therefore have had a valid claim based on ownership of the acetates, if that was the status of Tennessee law. But we'll never know because that isn't how the court analyzed the issue.

In a bizarre leap, the court relied on Tennessee right of publicity law. Apparently, Legacy argued that Williams had transferred his publicity rights and that this somehow encompassed copyright in the performances. The court seems to have agreed with the premise that publicity rights encompass copyright in the performance, which if I understand the court's discussion, I find astonishing, but this was merely a method for the court's use of a double negative to get rid of Legacy's claim:

"We are unwilling to infer, indeed to jump to the illogical conclusion that Hank Williams assigned [publicity] rights without limitation based on the mere fact that his heirs cannot establish that the 1951 informal agreement with WSM provided to the contrary." The court then affirmed that the heirs owned those rights by default, those rights being the publicity rights encompassing the copyright in the recorded performance.

Someone will no doubt write a bad country song about the opinion, but I would rather it be the blues.