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`Case 1:O5—cv—O9922—BSJ—JCF Document 57 Filed 09/16/09 Page 1 Of 27
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` UNITED STATES DISTRICT COURT
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`USDC SDNY
`DOCUMENT
`ELECTRONICALLY FILED
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`D: yufnlfig
`v
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`SOUTHERN DISTRICT OF NEW YORK
`.....................................................--x
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`BARBARA MASON,
`Intervention Plaintiff,
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`.v-
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`No. 05 Civ. 9922 (BSJ)(JCF)
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`JAMIE MUSIC PUBLISHING CO. d/b/a
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`DANDELION MUSIC CO., er al.,
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`Intervention Defendants.
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`..................................................... --x
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`OPINION AND ORDER
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`Before this Court is a motion for summary judgment brought by Intervention-
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`Plaintiff Barbara Mason (“Mason”) against Jamie Music Publishing Co. d/b/a/ Dandelion
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`Music Co., er al. (“JMP” or “Dandelion” or “Plaintiff/Intervention Defendants”)
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`(collectively “Defendants”).1 This action arises out of a dispute over the ownership of
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`‘the copyright in a musical composition, “Yes I’m Ready” (the “Composition”), that
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`Mason wrote in 1965.2 Mason seeks a declaratory judgment that she is the owner of the
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`Mason brings this action as an intervention plaintiff, pursuant to Fed, Rule Civ. P. 24(b). On
`I
`December 15, 2006, Mason filed a motion to intervene as a plaintiff pursuant to Rule 24 of the Federal
`Rules of Civil Procedure. (See No. 05 Civ. 9922, Doc. No. 18.) This motion was granted pursuant to an
`order issued by the Honorable James C. Francis IV, Magistrate Judge, on April 12, 2007. (See No. 05 Civ.
`9922, Doc. No. 32.) Mason filed her complaint as an intervention plaintiff (“Mason’s Complaint”) on May
`3, 2007. (See No. 05 Civ. 9922, Doc. No. 33.)
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`The underlying action involves a copyright infringement action, which was filed on November 23,
`2
`2005, by Plaintiff/Intervention Defendant JMP, Dartown, Inc. d/b/a Stilran Music, and Jamie Record
`Company against. Roc-A-Fella Records, LLC, Island Def Jam Music Group, Universal Music Group, Inc.,
`Diplomatic Man, Inc., Camero Giles d/b/a Killa Cam Music, Juelz Santana, Jimmy Jones d/b/a the
`(See
`Diplomats, Gregory Omar Green and Seon Thomas d/b/a Heatmakerz Music (“JMP’s Complaint”).
`JMP’s Complaint (annexed as Ex. l-E to March 28, 2008, Decl. of Frank Lipsius (“Lipsius Decl.”)), No. 05
`Civ. 9922, Doc. No. 50-11.)
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`

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`copyright to the Composition and she petitions the Court to deny JMP's request for a
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`declaratory judgment of ownership in its own name.3 (Mem. in Supp. of Mason’s Mot.
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`For Summ. J. (“Mason’s Mem.”) at 1.) Mason’s motion is based upon claims arising
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`under the Copyright Act, 17 U.S.C. § 101 et seq., and the Court has jurisdiction of this
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`action pursuant to 28 U.S.C. §§ 1331 and 1338(b). For the reasons stated below,
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`Mason’s motion is granted.
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`SUMMARY JUDGMENT
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`A grant of summary judgment is appropriate only if “there are no genuine issues
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`of material fact and the moving party establishes its right to judgment as a matter of law.”
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`EMI Catalogue P’ship V. Hill, 228 F.3d 56, 61 (2d Cir. 2000) (citing Fed. R. Civ. P.
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`56(c)); gt; a_l$ Celotex Co
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`. V. Catrett, 477 U.S. 317, 322-23 (1986). A dispute about a
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`material fact is genuine "if the evidence is such that a reasonable jury could return a
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`verdict for the nonmoving party." Anderson V. Liberty Lobby, Inc., 477 U.S. 242, 248
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`(1986). When deciding a motion for summary judgment, “all ambiguities must be
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`resolved and all reasonable inferences drawn in favor of the party opposing the motion.”
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`E EMI Catalogue P’ship_, 228 F.3d at 61 (citing Anderson, 477 U.S. at 255).
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`While Mason only seeks declaratory relief in the instant motion for summary judgment, she seeks
`3
`monetary damages and attorney's fees in her intervention complaint. (See Mason’s Complaint at the
`Wherefore Clause.) In their response to Mason’s Complaint, Defendants seek, inter alia, a declaratory
`judgment of copyright ownership to the Composition. (See Intervention Defs. ’ Answer to Intervention
`Compl. And Countercl. Against Intervention Pl. (“Defs.’ Answer”) at 1] 67 & the Wherefore Clause.)
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`

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`FACTUAL BACKGROUND4
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`Mason is the sole author of the song and lyrics to the Composition, which she
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`wrote in early 1965 when she was seventeen years old. (Decl. of Barbara Mason in
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`Support of Mot. For Summ. J .5 (“Mason Decl.”) 111] 2-3.) At that time Mason resided
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`with her parents in Philadelphia, Pennsylvania.
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`(Id. at 1] 3.) In April 1965, the
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`Philadelphia Orphan’s Court (the “Orphan’s Court”) appointed Norman A. Jenkins, Esq.
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`as guardian (“Jenkins” or the “Guardian”) for Mason, who was still a minor.6 (See April
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`30, 1965 Decree (the “April 30 Decree”), (annexed as Ex. 1 to February 23, 2007, Decl.
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`of Chuck Rubin in Support of Mason’s Mot. to Intervene (“Rubin Decl.”)), No. 05 Civ.
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`9922, Doc. No. 30.) The Orphan’s Court required that “[a]ll proposed contracts on
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`behalf of the said minor [Mason] shall be submitted to this Court for approval prior to
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`execution by the Guardian, copies of which proposed contracts shall be attached to a
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`Petition requesting approval thereof and authority to be given the Guardian for execution
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`thereof .
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`.
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`. .”7 (Id.) Jenkins submitted a petition to the Orphan’s Court to authorize
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`execution of the following three agreements on Mason’s behalf: (1) a recording
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`agreement with Artic Record Co. (the “Recording Agreement”); (2) a management
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`agreement with James Bishop (the “Management Agreement”); and (3) an author’s and
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`The material facts summarized below are undisputed unless otherwise noted. Any fact that has
`4
`been submitted by a party in its statement of uncontested facts, pursuant to Local Rule 56.1(a), and that has
`not been specifically controverted by the opposing party, is deemed admitted for purposes of the instant
`motion. E Local R. 56.1(c).
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`5
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`Mason’s declaration is not dated.
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`The Petition for the Appointment of a Guardian (the “Guardian Petition”), which was annexed to
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`the April 30 Decree, states that Mason was born on August 9, 1947. (Guardian Petition (annexed as Ex. 1
`to Rubin Decl.) at 11 1.)
`7
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`The Composition was written before the Guardian was appointed. (Mason Decl.11 7; see also
`Defs.’ Rule 56.1 Statement at 3-4.)
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`

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`composer’s Contract with Stilran Music & Dandelion Music Co. (the “Songwriter’s
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`Agreement”) (collectively the “Agreements”). (See Petition to Authorize Execution of
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`Agreements to the Orphan’s Court (the “Authorization Petition”), (annexed as Ex. 1 to
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`Rubin Decl.))8 The Orphan’s Court directed Jenkins to execute the Agreements by
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`decree dated June 3, 1965 (the “June 3 Decree”), which stated that copies of the
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`Agreements were attached to the Guardian Petition. (See June 3 Decree (annexed as Ex.
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`1 to Rubin Decl.).) The Agreements were the only written contracts that were approved
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`by the Orphan’s Court and that Jenkins executed on Mason’s behalf with JMP. (Defs.’
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`Rule 56.1 Statement at 7.)
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`The Songwriter’s Agreement was executed by Mason and Stilran Music &
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`Dandelion Music Co. on May 21, 1965.9 (JMP’s Local Rule 56.1 Statement at 6; Rubin
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`Decl. Ex. 1.) The Songwriter’s Agreement provided that Mason agreed to “sell, transfer,
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`assign and deliver to [Dandelion and Stilran] all music, melodies, lyrics, verses, songs
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`and musical compositions that [Mason] shall write and/or compose during the term
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`hereof and any extensions and renewals thereof .
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`.
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`. .” (Songwriter’s Agreement
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`(annexed as Ex. 1 to Rubin Decl.) at 1] 1.) The Songwriter’s Agreement provided for an
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`initial one-year term that commenced on May 21, 1965, and terminated on May 20, 1966,
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`and it included two successive options for one-year renewal terms. (Songwriter’s
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`Agreement 1] 2.) The Songwriter’s Agreement also stated that Mason would assign her
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`rights to any previously composed songs that were mentioned on an attached list of
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`The Authorization Petition, which is not dated, states that it is submitted pursuant to the April 30
`3
`Decree. (Rubin Decl. Ex. 1.)
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`The certified copy of the Songwriter’s Agreement that was filed with the Orphan’s Court was not
`9
`signed by Mason’s Guardian. (Rubin Decl. 11 7 & Ex. 1.)
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`musical songs and compositions marked as Schedule B.1° (Id. at
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`11 7.) Schedule B was
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`never filed with the Orphan’s Court and none of the documents on file with the Orphan’s
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`Court contain any mention of the Composition. (Rubin Decl.
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`‘Ml 6-7 & Ex. 1; Defs. Rule
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`56.1 Statement at 7-8.)
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`Prior to the appointment of the Guardian and to the execution of the Songwriter’s
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`Agreement, Defendants filed an application to register the copyright to the Composition
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`with the United States Copyright Office (the “Copyright Office”). The Copyright Office
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`issued a copyright registration certificate dated March 31, 1965, which listed Dandelion
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`Music Co. and Stilran Music as claimants and Barbara Mason as author. (See March 28,
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`2008, Decl. of Frank Lipsius (“Lipsius Decl.”) at Ex. 1-C.) Defendants obtained a
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`subsequent copyright registration certificate from the Copyright Office dated July 15,
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`1965.” (Id.) In 1993, Mason renewed the copyright to the Composition in her own
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`name and received renewal registration certificates from the Copyright Office dated
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`January 8, 1993.” (Mason’s Rule 56.1 Statement 11 3; Mason Dec1.1l 9 & Exs. 1, 2.)
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`On May 1, 2007, Mason entered into a written agreement (the “Purchase
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`Agreement”) with Embassy Music Corporation (“EMB”), in which EMB agreed to
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`purchase Mason’s one hundred percent worldwide copyright interest in and to the
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`Composition. (See Purchase Agreement (annexed as Ex. L to March 28, 2008, Decl. of
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`Specifically, paragraph 7 of the Songwriter Agreement provides: “Attached hereto and marked
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`Schedule B is a list of all songs and musical compositions written and/or composed prior to the term hereof,
`but as to which you hereby give and grant us the same rights as though they had been written and/or
`composed during the term hereof.”
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`The Copyright Office issued copyright registration certificates Nos. EU 875465 (March 31, 1965)
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`and EP 205076 (July 15, 1965).
`(Lipsius Decl. at Ex. 1-C; Mason’s Compl. 11 26.)
`12
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`The Copyright Office issued renewal registration certificates Nos. RE-617-406 and RE—6l7—407.
`(Mason’s Compl. 1] 28; Mason Decl. Exs. 1, 2.)
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`Roger Juan Maldonado (“Maldonado Decl.”)) at 1111 1-2; Mason Dep. (annexed as Ex. A
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`to Maldonado Decl.) at 206:9-207115).) On May 3, 2007, Mason filed a complaint
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`against JMP and other defendants that asserted, inter alia, causes of action for copyright
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`infringement and for a declaratory judgment of copyright ownership in the
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`Composition.” Mason filed the instant motion for summary judgment on March 18,
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`2008.
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`DURATION OF COPYRIGHT PROTECTION
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`The Copyright Act provides that “Copyright in a work protected under this title
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`vests initially in the author or authors of the work.” 17 U.S.C.A. § 201(a). Works
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`created before 1976 were subject to the protection of the 1909 Copyright Act (the “1909
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`Act”).14 See Nimmer on Copyright [hereinafter Nimmer], § 1—ov (2009); 17 U.S.C. 1.
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`Works created under the 1909 Act that complied with the proper requirements of
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`statutory notice were entitled to statutory copyright protection for a total of f1fty—six years
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`— an initial term of 28 years plus a second twenty-eight year renewal term.” See 3-9
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`The Complaint, which is dated May 2, 2007, named as defendants JMP, Dartown, Inc. d/b/a
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`Stilran Music, and Jamie Record Company, Roc—A-Fella Records, LLC, Island Def Jam Music Group,
`Universal Music Group, Inc., Diplomatic Man, Inc., Cameron Giles d/b/a Killa Cam Music, Juelz Santana,
`Jimmy Jones d/b/a The Diplomats, Gregory Omar Green and Seon Thomas d/b/a Heatrnakerz Music.
`(See
`Mason’s Compl; see supra n. 1.)
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`[4
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`Under the 1909 Act, applicable to works created before January 1, 1978, see 17 U.S.C. §
`301(b)(2), state common law copyright provided protection until first publication, and
`thereafter the work was entitled to an initial 28-year term of statutory copyright, provided
`that adequate statutory notice was given at publication, or appropriate registration and
`deposit were made, 17 U.S.C. §§ 2, 10, 12, 19, 21, 24 (repealed); see Shoptalk, Ltd. v.
`Concorde-New Horizons Corp., 168 F.3d 586, 590 (2d Cir. 1999) .
`.
`. If adequate statutory
`notice was given, then application for renewal made during the last year of the initial
`term would extend the copyright for a renewal term of 28 additional years. 17 U.S.C. §
`24 (repealed).
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`Martha Graham Sch. and Dance Found., Inc. v. Martha Graham Ctr of Contemporary Dance, Inc., 380
`F.3d 624, 632-33 (2d Cir. 2004) (footnote omitted).
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`“The 1976 Act created a unitary term for works created after January 1, 1978, and works that were
`15
`unpublished and unregistered on January 1, 1978. See 3 Nimmer § 9.05[A][2]. For works that were either
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`Nimmer§ 9.11. The 1909 Act was superseded by the Copyright Act of 1976 (the
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`“Copyright Act”), which became effective on January 1, 1978.16 See 17 U.S.C. §§ 101 et
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`seq.; Nimmer § 1—OV/7 Any pre-1978 cause of action is governed by the 1909 Act,”
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`“whereas the new law is effective as to subsequently arising undertakings.”]9 Nimmer §
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`1-OV.
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`DISCUSSION
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`Mason asserts that she is the undisputed author of the Composition and that she
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`owns the copyright, which initially vests in the composer of a musical composition. See
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`17 U.S.C.A. § 201(a). Mason further asserts that she never assigned her copyright to
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`Defendants and that she filed the copyright renewal registration to the Composition in
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`1993 pursuant to her statutory right of renewal as its author. Defendants advance several
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`theories under which the Court should find that ownership of the copyright in the
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`in their initial or renewal term on January 1, 1978, the 1976 Act extended the renewal period by nineteen
`years, but still required timely renewal. See 17 U.S.C. § 304, historical and statutory notes (H.R. Rep. 94-
`1476 (1976)).” Martha Graham Sch. and Dance F0una'., Inc., 380 F.3d at 633.
`In 1998, Congress passed
`the Sonny Bono Copyright Term Extension Act (“CTEA”), which extended for an additional twenty years
`the copyright in all subsisting works that had achieved statutory copyright under the 1909 Act. 9 Nimmer §
`9.11. “Any copyright still in its renewal term at the time that the Sonny Bono Copyright Term Extension
`Act becomes effective [effective Oct. 27, 1998] shall have a copyright term of 95 years from the date
`copyright was originally secured.” 17 U.S.C.A. § 304(b). Therefore, the Composition is entitled to a
`ninety-five year term of protection from its initial creation in 1965 since it was still in its statutory renewal
`period when the Sonny Bono Sonny Bono Copyright Term Extension Act took effect.
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`Title 17 of the United States Code, entitled "Copyrights", was “amended in its entirety” by Pub. L.
`l6
`94-553, Oct. 19, 1976, 90 Stat. 2541.
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`Under the 1976 Act, “[a]ny copyright, the first term of which is subsisting on January 1, 1978,
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`shall endure for 28 years from the date it was originally secured.” 17 U.S.C.A. § 304(a)1(A).
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`Section 112 of Pub. L. 94-553 provides: “All causes of action that arose under Title 17 before
`'8
`January 1, 1978, shall be governed by Title 17 as it existed when the cause of action arose.”
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`'9
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`In this Opinion, all citations are to the Copyright Act of 1976 unless otherwise indicated.
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`Composition was assigned by Mason to JMP.2O Defendants assert that the 1965
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`Songwriter’s Agreement assigned the Composition to Defendants and they urge the Court
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`to consider extrinsic evidence to interpret the Songwriter’s Agreement, which they
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`acknowledge is incomplete. Defendants also assert that their 1965 registration of the
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`copyright is prima facie evidence of their copyright ownership and they dispute that
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`Mason’s renewal registration of the Composition establishes her ownership in the
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`Composition. Defendants allege that Mason lacks standing to seek a declaratory
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`judgment with respect to her ownership of the copyright because she has assigned her
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`rights in the Composition. Lastly, Defendants assert that the equitable doctrines of laches
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`and estoppel bar this action.
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`1.
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`Standing
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`A court’s determination of whether a plaintiff has standing “is antecedent to any
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`declaratory judgment determination. A court must first satisfy itself that ‘the facts
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`alleged, under all the circumstances, show that there is a substantial controversy, between
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`parties having adverse legal interests, of sufficient immediacy and reality to warrant the
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`issuance ofa declaratoryjudgment.’” Tasini v. New York Times Co., 184 F. Supp. 2d 350,
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`356 (S.D.N.Y. 2002) (quoting Maryland Casualty Co. v. Pacific Coal & Oil C0,, 312
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`U.S. 270, 273 (1941)). Under § 50l(b) of the 1976 Copyright Act, which “merely
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`codified the case law that had developed under the 1909 Act with respect to the beneficial
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`owner’s standing to sue[,] .
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`.
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`. ‘[t]he legal or beneficial owner of an exclusive right under
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`Defendants claim that Mason assigned the initial copyright in the Composition to JMP and
`2°
`Dartown, Inc., d/b/a/ Stilran (“Stilran”), a former plaintiff in the underlying copyright action who is not
`named as an intervention defendant in the instant motion.
`(See Defs.’ Mem. at 5.) Stilran was listed on the
`initial 1965 copyright registration as a claimant along with JMP. (Defs.’ Mem. at 6.) Stilran was
`terminated as a party to the underlying action on March 3, 2006, pursuant to an order of stipulation and
`dismissal, and is not named as a party in the instant motion. (See No. 05 Civ. 9922, Doc. No. 14.)
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`a copyright’ is entitled to sue for infringement.” Cortner v. Israel, 732 F.2d 267, 271 (2d
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`Cir. 1984) (quoting 17 U.S.C.A. § 501(b)). “A ‘beneficial owner’ for this purpose would
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`include, for example, an author who had parted with legal title to the copyright in
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`exchange for percentage royalties based on sales or license fees.” Id. (citing the
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`legislative records of the Act and quoting H.R. Rep. No. 1476, 94th Cong., 2d Sess. 159,
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`reprinted in 1976 U.S. Code Cong. & Ad. News 5659, 5775 (internal quotations
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`omitted)). The Second Circuit has held, therefore, that “[w]hen a composer assigns
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`copyright title to a publisher in exchange for the payment of royalties, an equitable trust
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`relationship is established between the two parties which gives the composer standing to
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`sue for infringement of that copyright. .
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`.
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`. Otherwise the beneficial owner’s interest in
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`the copyright could be diluted or lessened by a wrongdoer’s infringement.” Id. (internal
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`citations omitted).
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`According to Defendants, Mason lacks standing to seek a declaratory judgment
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`with respect to her ownership of the copyright because she has assigned her copyright
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`interest in the Composition to EMB, which is not a party in this action. (Defs.’ Mem. at
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`2, 16.) Defendants proffer evidence of Mason’s testimony about the Purchase Agreement
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`that she executed in May 2007 with EMB, which states that Mason agrees to transfer and
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`assign to EMB “an undivided one hundred percent (100%) of [her] worldwide copyright”
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`ownership and rights of renewal in the Composition, along with her interest in “all claims
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`and causes of action” arising from the Composition prior to the Purchase Agreement.
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`(See Purchase Agreement 111] 1.2, 2.1, 2.5; Mason Dep. (annexed as Ex. A to Maldonado
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`Decl.) at 206:9-25; 20722-15.)
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`Mason asserts that she has standing to prosecute this action because (1) EMB has
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`not yet completed its purchase of her interest in the Composition pending resolution of
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`this action, and (2) notwithstanding any assignment to EMB, Mason remains a beneficial
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`owner of the copyright. (Mason’s Reply Mem. at 7-9.) Mason proffers the testimony of
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`John Castaldo, EMB’s controller, and Jay Berger, who negotiated the Purchase
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`Agreement on her behalf, that Mason and EMB had agreed that she “would prosecute in
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`her own name with her own counsel the Intervention Action,” and that “at the conclusion
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`and/or resolution of the Intervention Action, EMB would then accept her assignment of
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`her one hundred percent (100%) worldwide copyright interest to effectuate the Purchase
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`Agreement. Also consistent with that understanding, EMB has not paid the purchase
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`price specified in Paragraph 7.1 .
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`.
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`. .”21 (See April 4, 2008, Decl. of John Castaldo
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`(“Castaldo Decl.”) at W 1, 5-7; Berger Dep. (annexed as Ex. M to Maldonado Decl.) at
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`64-65.)
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`Based on the testimony and evidence proffered by the parties to the Purchase
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`Agreement, as well as the language of the Agreement itself, the Court concludes that the
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`Purchase Agreement has not been fully executed and that Mason has not yet assigned her
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`Mason testified that she has entered into the Purchase Agreement with EMB and that an initial
`21
`payment of ten thousand dollars was paid to her by Artists Rights Enforcement Corp. (“AREC”) as a result
`of that agreement. (Mason Dep. 206:9-207:4; 21 1 : 16-23.) The Purchase Agreement provides:
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`. EMB shall
`.
`In consideration of all of the rights and interests to be acquired by EMB .
`pay to [Mason], upon the complete execution of this Agreement, the sum equal to a
`thirteen (13) multiple of the NPS (Net Publisher’s Share) of the gross income derived
`from licensing of the composition “Yes I’m Ready” actually received during the last five
`years, less related Third Party Obligations and excluding advances, legal and royalty
`settlements and other adjustments relating to prior periods.”
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`(Purchase Agreement 1] 7.1.) In addition, the Purchase Agreement calls for an advance payment of twenty
`thousand dollars to be paid on Mason’s behalf to Artists Rights Enforcement Corp. (“AREC”) prior to the
`complete execution of the agreement.
`(Id. at 11 7.2.)
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`10
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`rights to EMB. “In the construction of copyright assignments, as with contracts and other
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`writings, the meaning to be placed on the words of the assignment ultimately turns upon
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`the intention of the parties to the agreement. .
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`.
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`. That intention is to be determined from
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`the evidence submitted to the court, including the agreement itself, statements and actions
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`of the parties contemporaneous with and following the agreement, oral testimony,
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`affidavits, depositions, and other equally competent evidence.” Epoch Producing Corp.
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`v. Killiam Shows, Inc., 522 F.2d 737, 747 n.7 (2d Cir. 1975) (internal citations omitted).
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`In addition, the Purchase Agreement provides that Mason will receive songwriter
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`royalties according to a stated royalty percentage schedule. (See Purchase Agreement, 1111
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`8, 8.1-8.8.) As such, Mason will retain a beneficial ownership of the copyright interest
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`once EMB becomes the legal owner of the copyright in the Composition. Accordingly,
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`the Court finds that Mason has standing to bring this action.
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`II.
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`Assignment of Copyright Ownership
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`The Copyright Act defines a “transfer of copyright ownership” as “an assigmnent,
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`mortgage, exclusive license, or any other conveyance .
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`.
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`. of a copyright or of any of the
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`exclusive rights comprised in a copyright .
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`.
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`. but not including a nonexclusive license.”22
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`17 U.S.C.A. § 101; Time, Inc. v. Kasmer, 972 F. Supp. 236, 238-39 (S.D.N.Y. 1997). “A
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`transfer of copyright ownership, other than by operation of law, is not valid unless an
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`instrument of conveyance, or a note or memorandum of the transfer, is in writing and
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`“[l.] Pre-1978 Grants of Statutory Copyright. Section 28 of the 1909 Act provided that a copyright
`22
`might be ‘assigned, granted, or mortgaged’ but that this could be done only ‘by an instrument in writing
`signed by the proprietor.’ A copyright license, as distinguished from an assignment, could be made orally,
`or could be implied from conduct. This was true under the 1909 Act of both exclusive and nonexclusive
`licenses.” 3-10 Nimmer § 10.03 (footnotes omitted).
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`signed by the owner of the rights conveyed or such owner's duly authorized agent.” 23 17
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`U.S.C.A. § 204(a); see also Martha Graham Sch. and Dance F0und., Inc., 380 F.3d at
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`643 (“A valid assignment of statutory copyright must be in writing.”). The Copyright
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`Act recognizes only two exceptions to the writing requirement for a valid transfer of
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`copyright ownership: (1) a nonexclusive license, and (2) a transfer by operation of law.
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`Time, Inc., 972 F. Supp. at 238-39 (holding that oral agreements failed to effect a valid
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`transfer of copyright ownership).
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`The Court must consider two issues in determining whether Mason is entitled to
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`the declaratory judgment of copyright ownership that she seeks:
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`(1) whether Mason
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`assigned her initial copyright ownership in the Composition in 1965 pursuant to the
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`Songwriter’s Agreement and/or related writings; and (2) whether Mason assigned her
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`statutory right to renew that interest upon the expiration of the first twenty-eight year
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`term of copyright protection.
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`A.
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`The Songwriter’s Agreement
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`Defendants assert that the Songwriter’s Agreement included an assignment of
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`Mason’s copyright interest in the Composition because (1) Mason’s guardian, Jenkins,
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`The Court notes that the Second Circuit has held that an oral transfer that was subsequently
`23
`memorialized in writing may be a valid transfer of a copyright ownership. See Khan v. Leo Feist, Inc., 165
`F.2d 188, 191-92 (2d Cir. 1948) (“The assignment ofthe song and of the right to copyright it
`.
`.
`. was oral,
`but later [the composer] .
`.
`. reduced the assignment to writing .
`.
`.
`. Defendants contend that the assignment
`.
`.
`. was invalid because it was not made in writing at the time of oral agreement therefor. But the writing,
`like the memorandum of an oral agreement under the statute of frauds, we regard as sufficient to satisfy the
`British Copyright Law by confirming the prior oral assignment.” (footnotes omitted)); see also Dan-Dee
`Imports, Inc. v. Well-Made Toy Mfg. Corp., 524 F. Supp. 615, 618 (D.C.N.Y. 1981) (citing Khan as
`“supporting the proposition” that the “requirements of 17 U.S.C. § 204(a) can be satisfied by an oral
`assignment later ratified or confirmed by ‘a note or memorandum of the transfer, ”’ and noting that
`“Professor Nimmer has interpreted the addition of ‘a note or memorandum of the transfer’ in new 17
`U.S.C. § 204(a), as a codification of the holding in Khan, Nimmer on Copyrights, § l0.03(A) at 10-34
`(1981) (quoting §204(a)). The Ninth Circuit has also recognized that the requirement of a written
`confirmation of a transfer signed by the copyright owner under § 204(a) “can be satisfied by an oral
`assignment later confirmed in writing.” Stewart Title of California, Inc. v. Fidelity Nat. Title C0., 279 F.
`App’x 473, 475 (9th Cir. 2008).
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`“informed Mason that the Songwriter’s Agreement included musical compositions that
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`Mason had composed prior to [the] execution of the [Songwriter’s Agreement],” and (2)
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`the Songwriter’s Agreement also assigned prior compositions that were listed on a
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`Schedule B and that were by incorporated into the Songwriter’s Agreement by reference
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`in paragraph seven. (Maldonado Decl. 1] 4(d); Defs.’ Mem. 5-6.) Defendants
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`acknowledge that the Songwriter’s Agreement that was filed with the Orphan’s Court did
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`not contain a Schedule B but they assert that the Songwriter’s Agreement is “incomplete
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`and .
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`.
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`. susceptible to the interpretation that ‘Yes, I’m Ready’ was one of the
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`compositions transferred to JMP, even though it is not specifically mentioned in the
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`Agreement.” (Defs.’ Mem. at 5-6.)
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`Mason proffers evidence that the file copy of the Songwriter’s Agreement that
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`was entered on behalf of Ms. Mason as a minor with the Orphans’ Court of Philadelphia
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`County (the “Orphan’s Court”), “does not make any mention of the composition ‘Yes I’m
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`Ready’; nor does it contain anything titled ‘Schedule B.”’ (Rubin Decl. 11 6 & Ex. 1.)
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`As Defendants concede, the only written contracts that were entered into by JMP
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`and Mason’s Guardian are those documents that were specifically approved by the
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`Philadelphia Orphan’s Court. (See Defs.’ Rule 56.1 Statement at 7; Rubin Decl. ll 5 &
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`Ex. 1.) It is undisputed that the Orphan Court’s file copy of the Songwriter’s Agreement
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`does not contain a Schedule B that identifies Mason’s prior compositions and that none of
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`the documents that were filed with the Philadelphia Orphan’s Court include any mention
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`of the Composition. (Defs. Rule 56.1 Statement at 8; Rubin Decl. Ex. 1.) Indeed,
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`Defendants do not claim that Schedule B existed and was later lost or destroyed.
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`Accordingly, the Court finds that the Songwriter’s Agreement fails to satisfy the
`
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`writing requirement to effect a valid transfer of copyright ownership pursuant to 17
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`U.S.C. § 204(a). “Any ambiguities or doubts concerning the scope of rights assigned by
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`the [authors] .
`
`.
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`. must be construed in favor of the [authors].” Jim Henson Productions,
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`Inc. v. John T. Brady & Ass0cs., Inc., 16 F. Supp. 2d 259, 285 (S.D.N.Y. 1997); see also
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`Papa ’s—June Music, Inc. v. McLean, 921 F. Supp. 1154, 1160 (S.D.N.Y. 1996)
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`(“[T]ransfer agreements should be construed in favor of copyright transferor because
`
`section 204(a) reflects the policy judgment that copyright owners should retain all rights
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`unless specifically transferred.” (citing 1 William F. Patry, Copyright Law and Practice at
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`392)).
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`B.
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`Extrinsic Evidence
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`Defendants assert that the Court should consider extrinsic evidence to “interpret
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`and give force to the provisions of the [Songwriter’s] Agreement,” including Mason’s
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`testimony about certain correspondence between Mason and JMP, as well as royalty
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`checks and statements Mason received from JMP in connection with its exploitation of
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`the Composition. (Defs.’ Mem. at 5-9, 12-13.) According to Defendants, this extrinsic
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`evidence, when considered in its entirety, “establishes that the parties did intend to
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`transfer the copyrights to [the Composition] to JMP pursuant to the 1965 Songwriter’s
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`Agreement.” (Defs.’ Mem. at 9.)
`
`i.
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`The Parties’ Correspondence
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`Defendants proffer Mason’s testimony about a handwritten letter Mason sent in
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`July 1984 (the “July 1984 Letter”) to Harold Lipsius (“Lipsius”), the former president of
`
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`JMP, informing him of a third party’s use of the Composition.” (See Mason Dep. at
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`148:3-149225; Maldonado Decl. Ex. J.) Mason testified that in the July 1984 Letter, she
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`thanked Lipsius for “looking into this matter which concerns both of us,” by which she
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`meant her business dealings with Lipsius regarding other artists’ use of the
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`Composition.“ (Mason Dep. l49:l2-157219.) Defendants also proffer Mason’s
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`testimony about having received three letters Lipsius wrote to her as president of JMP
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`along with royalty payments made in conjunction with this correspondence: (1) a March
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`4, 1997 letter, 25 which informs Mason that JMP has a 62.5% ownership interest in the
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`According to Frank Lipsius, a vice-president of J