Thursday, December 21, 2006

A Whiter Shade of Joint Authorship

One of my favorite of all blogs is the UK IPKat, founded by Jeremy Phillips and Ilanah Simon in June 2003. It covers copyright, patent, trade mark and privacy/confidentiality issues “from a mainly UK and European perspective.” Every time I read it, which is every day, I am humiliated: the writing is always witty and highly informative, the blog’s use of visual images is amazingly creative and it is frequently populated with extremely helpful links. This is the crème de la crème.

Yesterday, I came across a report in it of an opinion by Justice Blackburne of England’s High Court in a copyright suit brought by Matthew Fisher, former Hammond organist of the British band Procol Harum, whose 1967 “A Whiter Shade of Pale” I remember well. There are two reasons I remember it; first, Fisher’s organ work; second, I could never figure out what the lyrics meant. I am not alone in this inability, but surprisingly efforts by some of us on this side of the Great Pond to understand them (efforts I confess I never undertook), have annoyed Mr. Fisher. In an March 25, 2000 interview with him on the occasion of Claes Johansen’s biography of the group, he made this statement:

"I don't know what they mean. It's never bothered me that I don't know what they mean. This is what I find rather hard, that, especially in America, people are terribly hung up about lyrics and they've got to know what they mean, and they say, "I know, I've figured out what these lyrics mean." I don't give a damn what they mean. You know, they sound great… that's all they have to do."

For those who want to read the lyrics and further annoy Mr. Fisher, here is a link to them. The song remains quite popular, and it has its own wikipedia entry, which quite wonderfully was updated the same day to take into account the opinion, one of the features that endears Wikipedia to me. (The entry also discusses alleged similarities to works of Bach).

Here is a link to a BBC story about the opinion. Within the story click on, underneath the picture of Fisher, the button that says “Watch the song performed.” That takes you to a filmed report that includes an interview with Fisher and clips of original performances of the song.

Mr. Fisher’s dispute with his bandmates Gary Brooker and Keith Reid turned on Fisher’s claim that he should be regarded as a co-author of the composition, and as such entitled to a percentage of the royalties. The law in the U.K. on joint authorship is quite different from that in the U.S. In the U.S., joint authors own an undivided interest in the whole according to the number of co-authors: two own 50%, three 33 1/3%, etc. This is without regard to the respective qualitative or quantitative contributions: with two co-authors each own a 50% interest even if one contributed only 10% to the work. Because of this, one would think that the threshold for being a joint author would be high, but it really isn’t, aside from having to contribute expression and having an intent to be a joint author.

In the U.K., however, not only is the contribution threshold higher, but the consequences are different too. As set out in the Spandau Ballet case, Hadley v. Kemp, [1999] E.M.L.R. 589, it is required that the contribution must have been original and “significant,” “the right kind of “skill and labour,” “significant and skillful.” (A recent 80 plus page UK opinion on claims by former members of Bob Marley and the Wailers provides a fascinating account of these issues for many of the group’s most famous songs, Barrett v. Universal-Island Records Ltd., [2006] EWHC 1009 (Ch.)(Lewison, J.)). Once one meets this threshold, as Fisher was held to have done, Justice Blackburne – a music expert in his own right before being called to the bar and bench– stating: “I find that the organ solo is a distinctive and significant contribution to the overall composition and, quite obviously, the product of skill and labour on the part of the person who created it,"), the proportional ownership is based on the extent of the contribution not the number of authors, Fisher being awarded 40%.

In the U.S., had he won, he would have received a mathematical percentage based on the number of composers (that might not have been the same as the number of band members; for instance, if Lennon and McCartney wrote a song, they would each be 50% owners, even though the Beatles as a group had four members; for the sound recording of the song, however, all four would have an 25% interest, reduced proportionally by the producer's share, e.g. George Martin or the label. Many bands today exist as a juridical entity, resulting in perhaps only two "authors" of the sound recording, the group as a single performer and the producer, again likely a juridical entity).

Another difference between the two countries’ laws (and those IPKittens can correct me if I am wrong), is that in the U.K., joint authors cannot license a work without the others’ permission, whereas in the U.S., joint authors can unilaterally license the work on a non-exclusive basis.

But the biggest difference is that in the U.S., Fisher's case would have been dismissed at the outset on statute of limitations grounds; the song was, after all, written and performed and credit taken in 1967. This point is illustrated in an opinion issued by the First Circuit just six days ago, Santa-Rosa v. Combo Records, 2006 WL 3691613 (1ST Cir. December 15, 2006):

"17 U.S.C. § 507(b) provides that “[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued.” A claim accrues when “the plaintiff ‘knows or has reason to know of the act which is the basis for the claim.’ “ Rodríguez-García v. Municipality of Caguas, 354 F.3d 91, 96-97 (1st Cir.2004) (quoting Rodríguez Nárvaez v. Nazario, 895 F.2d 38, 41 n. 5 (1st Cir.1990)). Thus, a claim for declaratory judgment of ownership accrues when the plaintiff “knew of the alleged grounds for the [ownership] claim.” Margo v. Weiss, 213 F.3d 55, 60-61 (2d Cir .2000); see also Merchant v. Levy, 92 F.3d 51, 56 (2d Cir.1996)(“[N]o ··· uncertainty exists as to co-ownership rights based on co-authorship. A co-author knows that he or she jointly created a work from the moment of its creation.”). It goes without saying that Santa Rosa was present when his performances were recorded by Combo Records, and thus knew from the moment that each recording was created that he had a potential claim for ownership of it. Thus, there is little question that Santa Rosa's claims for co-ownership accrued as soon as he finished recording each album.

Santa Rosa points to the Ninth Circuit's holding in Zuill v. Shanahan that a claim for a declaratory judgment would not accrue until a “plain and express repudiation of co-ownership is communicated to the claimant.” 80 F.3d 1366, 1369 (9th Cir.1996). Even applying this test for accrual of a claim, we cannot think of a more plain and express repudiation of co-ownership than the fact that Combo openly, and quite notoriously, sold Santa Rosa's records without providing payment to him: according to documents provided by Santa Rosa, at least 1,140 of the recordings in dispute were sold during the six month period between January and June of 2000, almost four years before Santa Rosa filed suit in May 2004. Likewise, it is hard to believe that a singer of Santa Rosa's stature would have been unaware that Combo Records was selling his recordings and thus claiming ownership over them until three years before this action was commenced.

Because we conclude that Santa Rosa had reason to know of his claim of ownership over the recordings soon after they were created (which was well over three years before Santa Rosa filed suit against Combo), we agree with the district court that Santa Rosa's declaratory judgment action is time barred by 17 U.S.C. § 507(b)."

In Mr. Fisher's case there was an estoppel agreement, which Justice Blackburne rejected.


Anonymous said...

"Protocol Harum"? (Forget the lyrics of "Whiter Shade of Pale." What in heck does the name of the band mean?) Fun, brief, related story here.

Anonymous said...

It's Procol Harum, not Protocol Harum, you lawyers, you.

William Patry said...

I knew the name, but am a terrible proofreader.

Anonymous said...

Well, Bill, at least you didn't call them Proctol Harem. I think I saw that as a title in a video store once . . .

Anonymous said...

In regards to the the final point in your post about the time bar on bringing actions under the American Copyright Act: it appears to me, at least, that Britain has a better policy. The music industry has always been filled with fly by night business organizations, and under-the-table practices. The three year time-bar seems inadequate for dealing with the industry as it actually functions.

William Patry said...

Dear Anonymous (that is the Anonymous with the posting above my last comment), what facts in Mr. Fisher's case would justify your particular remarks? I don't think there was anything in Justice Blackburne's opinion (which I loved) that suggested any such dealings. This is not to say such dealings don't occur, but at least for those U.S. courts that follow our discovery rule for accruing causes of action for the running of a limitations period, if the putative author has been preevented from learning facts that would have put him or her on notice of the existence of a possible claim, the limitations period won't begin until he or she learned of those facts.

Where, as in Mr. Fisher's case, there was no such inhibition (I note Mr. Justice Blackburne stated this was the most difficult part of the case for him), why should someone who sits on his tuchis (as we say here in some parts of the States) be permitted to start an action almost 40 years later?

Anonymous said...

Dear Mr. Patry:

Let's look at the facts in Santa-Rosa in the light most favorable for the plaintiff -- which is a situation that I contend happens quite often in the music industry.

Santa-Rosa may have very well went into the studio as a young musician having reached only a verbal contract with his recording company; not being adequately concerned about a formal written agreement. The record company gives him an up front payment but reneges on the rest of the agreement.

Under the First Circuit ruling (and mind you there appears to me, at least, to be a circuit split between how the First Circuit and the Ninth Circuit handles these cases), he's neither allowed to rescind his contract nor argue ownership if he doesn't bring suit in three years.

In 1985 (if Wikipedia can be trusted ) Santa Rosa was 23; but I don't doubt that this happens to much younger musicians. Maybe it's not so much sitting on his 'tuchis' as just been ignorant of the fact that law can work for him. (as a side note, where in the U.S. do they use the word 'tuchis'? :))

It may be possible to read the notice-for-claim requirement equitably to prevent these situations -- but the First Circuit certainly didn't.

I know this is a sob-story; but it's a sob-story that I think happens, and is avoidable, and should be avoided.

William Patry said...

Dear Anonymous, on tuchis, here is a wonderful illustrated entry on wikipedia on the anatomy in question:

The term is used in all Jewish neighborhoods I have lived in (my kids also use tushi).

I still don't see the sob quotient in Senor Santa Rosa's case. Moreover the purpose of statute of limitations is not to exclude meritless cases but all cases. Its objective is to say at some point you have to stand up like a caballero and say "That's mine!"

Paul Cooke said...

PPL & PRS Legal Action by Major Artists

I have been reliably informed by a friend of mine residing in Canada that she has instructed a lawyer to investigate why she hasn’t been paid song writing royalties or performance royalties for the past ‘TEN’ years via PRS or PPL in the UK. My friend herself a Major recording artist and performer in the early 90’s with a song writing credit on a popular and hit song first approached me over a year ago with her dilemma. I initially investigated her concerns and found that an eminent publisher had diverted her share of the song writing copyright to his publishing company? I approached the gentlemen concerned and was not availed of a reply?

Of course I questioned if it was an address problem but my friend informed me that she had sent in all the required forms and had called the organisations in the UK on many occasions but to no avail? This is quite clearly another example of a breach of trust related to artists working through PRS & PPL in the UK to get compensated for their work. In the commercial world it’s akin to creating a partnership and inventing a product and then licensing that product for exploitation to third parties. But when the licensing fees are paid in accordance with those licensing agreement the third party companies keep all the licensing revenue for themselves and do not distribute it to the license holders. In simple terms what we would call Fraud in the business community, so why is it looked upon as any different if it is a music licence? One major issue is royalty collection organisations indifference to Performing Artists when they seeking clarification or help, yet all the organisations promote robustly their ethos of working on behalf of performers and their rights, quite clearly this is lip service marketing. The fact that delay is used as a tactic to wear down artists is fundamental to aborting any future claim as in the UK courts delay can be argued against the artist as in the case of Fisher vs Brooker & Reid, please bear in mind it took Mr Fisher 35 years to get to this stage.

‘The Court of Appeal have (after 6 months deliberation) finally issued their judgment regarding the "Whiter Shade of Pale" lawsuit. They have basically upheld all of Mr Justice Blackburne's findings, with one exception - by a two to one majority they have ruled that although I am a writer and copyright-owner, I should not be entitled to receive any remuneration arising from the exploitation of that copyright. I shall have more to say about this judgment in due course, but in the meantime my initial comments are as follows: This is a most peculiar judgment that will please nobody. It raises more questions than it answers. Having demolished every single argument advanced by Gary Brooker's legal team, Lord Justice Mummery suddenly produced an argument of his own, like a magician producing a rabbit out of a hat. This argument is so obscure and oblique as to defy comprehension. It had never been anticipated, either by the two legal teams concerned, or by any of the many legal commentators who have written about the original trial. It will be interesting to hear the reactions of other specialist copyright lawfirms such as Clintons or Davenport Lyons. Nevertheless, from my point of view this case was never about money - it was about getting my name on the song to which I contributed the most commercial and essential feature’.

Mathew Fisher

I would like to refer you all to Mathew Fishers statement at APPENDIX 1 that refers to the defendants issuing a statement that they will defend the copyright of the song until Mr Fishers bankruptcy.
"Our clients have no intention of ceding to your client any form of copyright interest in the song ... our clients will defend these proceedings to the bitter end. They will refer the court to this letter on the issue of costs and will look to enforce all possible costs remedies they have available to them.
In the case of your client they will pursue him to bankruptcy." [Emphasis added]
And herein lies the problem as I found out in my five year case against Sade & Sony BMG in-regards to similar copyright claims. The law in the UK promotes delay and the Major Record companies that control the initial copyright use this to their advantage, once the statute of limitation stage has passed then it is very difficult to assert your claim. Yet in the same respect it can take the same amount of time for you to find legal representation in the first place after writing to all concerned and getting no reply for many years leads you to this conclusion. Other contributing factors that go towards delay are the fact that you cannot find legal representation to assert your claim, one reason why I had to resort to civil actions in the Hull courts in 2007, Cook vs BBC, Cook vs Sade and Cook vs PPL. I will be calling on my MP to request that the APMG look at a situation whereby performing artists that have no collateral to back up their claims against Major Record companies and associated third party organizations such as PRS & PPL be given FREE Pro Bono advice by an organization funded directly by the Government to police Performers Rights in the past and in the future. It is quite clear in Mr Fishers case and mine that we added worth to the songs in question and as artists want that recognition, but also in the same respect a share of the many millions of pounds that our contributing factor generated. Whereas Mr Fisher was not particularly focused on the pecuniary rewards associated with his work I am as it is unfair that any company exploits their position to leverage reward from the endeavors of others without due and fair compensation being paid. This is a systemic failure of the Music Industry to compensate recording artists that goes back to the 1940’s and still musicians in 2008 are treated like uneducated minorities that can be easily manipulated for gain by heavy handed and cunning music industry impresarios. We have the APMG established to now Police the music industry, what will its response to my claims be? I have presented my arguments to my MP and he should by all accounts present his constituent’s members concern to the APMG, what will be his response to the group’s findings and will I get a response at all? The music industry is worth 6 Billion to the UK government, when will the UK government recognize that people like Mathew Fisher and many hundreds of other musicians created that worth with little or none of its profits going to those that generated the wealth in the first place.

‘However, as a matter of justice, I still do not understand why two of the Court of Appeal judges decided my perfectly valid and successful claim to authorship should mean absolutely nothing in financial terms for the future, or why Gary and various other people should continue, for my lifetime and for 70 years afterwards, to reap all the financial rewards of my creativity, when they have already benefited freely from the millions of pounds I have earned for them in the past’.
Mathew Fisher
We may be called diners but only if we are invited to the table to dine. For PPL in the UK and Sound Exchange & AFTRA in the USA to afford us Performance Rights but then not account to us is exactly that we are diners but not allowed to dine. It is for the APMG established to look into the mechanisms of music conduit royalty distribution and the affect on performers such as myself to ascertain why given laws established in 1996 & 2005 organizations like PPL, AFTRA & Sound Exchange are not recognizing the very laws that where set up to protect Performing Artists and give them rights in the first place?


Paul Cooke

Appendix 1

The recent decision by the Court of Appeal has confirmed my joint authorship of A Whiter Shade of Pale but denied me any control over its future exploitation.
The announcement of this decision has been followed by a number of media reports depicting Gary Brooker as a reasonable and fair-minded person, who would infinitely have preferred to settle this dispute in an amicable and gentlemanly way, without recourse to litigation, whereas I am portrayed as an intransigent and vengeful fiend who was determined, whatever the cost, to drag the unfortunate Mr Brooker through the courts.
I think it is high time to dispense with bizarre fantasies of this kind and look squarely at the facts:
1 Gary's Approach to Litigation
At the original trial an early letter from Gary's lawyers was read out in open court, stating clearly and unambiguously:
"Our clients have no intention of ceding to your client any form of copyright interest in the song ... our clients will defend these proceedings to the bitter end. They will refer the court to this letter on the issue of costs and will look to enforce all possible costs remedies they have available to them.
In the case of your client they will pursue him to bankruptcy." [Emphasis added]
Throughout the litigation Gary stuck doggedly to the position stated above and flatly refused to admit that I had composed any part of A Whiter Shade Of Pale - in fact he signed a Witness Statement to this effect, and then hired a very expensive Expert Witness to back him up.
Yet when Gary himself was put in the witness box under oath to tell 'the truth, the whole truth and nothing but the truth' he very commendably did exactly that - and freely acknowledged that I had created the entire organ part from beginning to end. He even insisted on demonstrating, on a keyboard in the courtroom, that my organ part was completely different from the sort of thing he had been playing before I joined the group.
No wonder Mr Justice Blackburne concluded that on the authorship question 'there was really no contest'.
In view of this it is, frankly, astonishing that throughout the long run-up to the trial Gary persistently made it clear that the burning issue for him was the question of authorship, and that he was intent on fighting me to the bitter end to dispute this central point.

2 The Outcome
Predictably, and justly, on the authorship issue I have won. Both Courts have now recognised Gary and me as joint authors of the music in A Whiter Shade Of Pale, and Gary will just have to accept this. All four of the judges who have considered this case so far have awarded me the right to be named as one of the composers, and to enjoy at last the attendant recognition and reputation which I have been denied for so long. As I have always said, this shared credit and acknowledgement are far more important to me than money.
However, as a matter of justice, I still do not understand why two of the Court of Appeal judges decided my perfectly valid and successful claim to authorship should mean absolutely nothing in financial terms for the future, or why Gary and various other people should continue, for my lifetime and for 70 years afterwards, to reap all the financial rewards of my creativity, when they have already benefited freely from the millions of pounds I have earned for them in the past.
My claim has always been a 'one-off', because the facts in this case are utterly unique; but my lawyers tell me that the Court of Appeal's decision amounts to something of a new departure in law, and has far reaching and wide ranging implications which raise a number of serious legal questions.
For these reasons I shall pursue an appeal to the House of Lords.

3 The Possibility of Amicable Settlement
The question most frequently asked about this lawsuit by reasonable observers is: 'Why on earth didn't they settle it between themselves, instead of going to court?'
I can only say I share this sense of bewilderment.
I had always hoped to reach a fair settlement of this dispute by amicable discussion, and I was even willing to accept a reasonable compromise in order to avoid going to court. The single non-negotiable factor was my recognition as a joint author of A Whiter Shade Of Pale.
Unfortunately, this fact was always vehemently denied, and when the case came to trial most of the court's time (and therefore most of the expense of the case) was spent on arguing this one point.
Before the original trial I willingly agreed to try mediation, in the hope of avoiding the need to go to court. The mediation process is subject to strict terms of confidentiality, so I am unable to comment on what happened there. It appears, however, that Gary's representatives have no more respect for the law on this point than they have for the laws of copyright or defamation (although I suppose it could be argued that statements with no truth in them do not breach this confidentiality!).
I understand Gary is now publicly alleging that I was unwilling to settle our dispute by discussion, and that I even failed to turn up when he arranged a meeting with me for this purpose before we went to Court this time, for the Appeal hearing. This is actually the opposite of what happened.
After the original trial I attempted to open negotiations through Onward Music, the publisher and Second Defendant, to discuss the possibility of a new agreement which would be fair to all parties and settle matters once and for all. A meeting was agreed and arranged, but it was Gary and Keith who backed out and called it off, claiming that the timing was wrong. I can only assume they had decided they would prefer to take their chances in the Appeal.
My impression was that Onward would have welcomed an opportunity to sort the matter out on a sensible commercial basis. I have always been concerned about the risk of possible conflict between Onward on the one hand and Gary on the other, but they chose to be represented throughout by the same law firm. At an early stage my lawyers formally pointed out that this situation might involve a conflict of interest between the two Defendants, but their solicitors never seemed to think it was a problem.
To sum up, all attempts at settling this matter without going to court have been thwarted by Gary's intransigent approach over the question of joint authorship, as illustrated in the letter quoted above, and by the unremitting belligerence, arrogance and aggressiveness which has characterised the Defendants' whole conduct of this case.
I have to say Gary's recent claims that he always wanted an amicable solution do not accord with his actions in the past; but perhaps time will show whether he is genuine about wanting to achieve this for the future.
Matthew Fisher - 15th April 2008