Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23. Page 1 of 23
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`UNITED STATES DISTRICT COURT
`:
`SOUTHERN DISTRICT OF NEW YORK
`Me ee een x
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`JOHN WAITE,an individual,et al.,
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`|
`luspc SONY
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`!
`l DOCUMENT
`ELECTRONICALLY FILED|
`ik
`paneoe
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`i DATE FILED:
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`(- 27-2023 |
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`Plaintiffs,
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`-against-
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`19-cv-01091 (LAK)
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`UMG RECORDINGS, INC., et al.,
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`Defendants.
`ee eee ee ee ee ee ee eR Re ee ee ae eee eee ee KX
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`MEMORANDUM OPINION
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`Appearances:
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`Roy W. Armold
`Ryan E. Cronin
`Gregory M. Bordo
`David M.Perry
`Heidi G. Crikelair
`Jillian M. Taylor
`BLANK ROME LLP
`
`Evan 8. Cohen
`Maryann R. Marzano
`COHEN MUSIc LAW
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`Attorneysfor Plaintiffs
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`Ariel Atlas
`Rollin A, Ransom
`Lisa M. Gilford
`Lauren M. DeLilly
`SIDLEY AUSTIN LLP
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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 2 of 23
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`Richard S. Mandel
`Thomas Kjellberg
`COWAN, LIEBOWITZ & LATMAN,P.C.
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`Attorneys for Defendants
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`Lewis A. KAPLAN,District Judge.
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`When Victor Willis co-wrote the lyrics to the “Y.M.C.A.,” he did not expect it to
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`become a cultural icon that would be honored one day as a workof historical significance in the
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`Library of Congress’s National Recording Registry.' For decades, most of the profits wentto the
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`record labels to which Willis transferred his copyright in exchange for their publishing and
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`commercializing the song.’ Years later, however, Willis regained ownership of the copyright
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`
`
`Neely Tucker, NationalRecordingRegistry. It’s Victor Willis, Mr. “YM. C.A”!, Library of
`Congress, Mar. 25, 2020, https://blogs.loc.gov/loc/2020/03/national-recording-registry
`-its-victor-willis-mr-y-m-c-a/,
`
`Larry Rohter, A Village Person Tests the Copyright Law, N.Y. Times, Aug. 16, 2011,
`https://www.nytimes.com/201 1/08/1 T/arts/music/village-people-singer-claims-rights-to-y
`mea.html; see also Scorpio Music S.A, v. Willis, No. 11-cv-1557 (BTM) (RBB), 2012 WL
`1598043, at *1 (S.D. Cal. May 7, 2012).
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 3 of 23
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`3
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`pursuant to Section 203 of the Copyright Act of 1976, which established a limited opportunity for
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`authors and other creators of copyrighted material* to terminate their prior transfers of copyright.*
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`The recordingartists in this putative class action aspire to the same. Plaintiffs are
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`professional musicians who served written notices of termination on UMG Recordings, Inc.
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`(“UMG”) and Capitol Records, LLC (“Capitol”) (collectively, “Defendants”) pursuant to Section
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`203 to reacquire copyrights in sound recordings they transferred to Defendants’ predecessors in
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`exchange for the predecessors’ agreements to market and sell the recordings.” Uponthe effective
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`date of termination in a notice, the grantee becomes the owner of the copyright and holds the
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`exclusive right to reproduce and distribute the recordings.° Plaintiffs allege that Defendants are
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`infringing their copyrights (and those of otherartists who also have served termination notices) by
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`continuing to market andsell recordings for which the effective dates of termination have passed.
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`They seek actual and statutory damagesand an injunction prohibiting Defendants from infringing
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`on their copyrights.’ With respect to recordings for whichthe effective date oftermination has not
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`literary, musical, dramatic, pantomimic,
`the Copyright Act, audiovisual,
`Under
`choreographic, pictorial, graphic, sculptural, and architectural works, as well as sound
`recordings, are included among “[w]orks of authorship” in which copyright protection may
`subsist. 17 U.S.C.§ 102(a). For ease of expression,this decision refers to all creators of
`works subject to copyright protection as “authors,” regardless of the media in which they
`expressed themselves.
`
`Larry Rohter, A Copyright Victory, 35 Years Later, N.Y. Times, Sept. 10, 2013,
`https:/Avww.nytimes.com/2013/09/11/arts/music/a-copyright-victory-35-years-later.html.
`
`Dkt 95 at 3.
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`17 U.S.C. § 106.
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`Dkt 95 at 31.
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 4 of 23
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`yet been reached, Plaintiffs seek a similar injunction plus a declaration of certain legal rights and
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`duties of the parties.*
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`The matter is before the Court on Plaintiffs’ motion for class certification, their
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`appointmentas class representatives, and the appointment ofclass counsel.”
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`4
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`Background
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`Leonard Graves Phillips, Stan Sobol, Steve Wynn, Dennis Mchaffey, Joel David
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`Pellish, and Susan Straw Harris (collectively, “Plaintiffs”) are musicians, singers, and songwriters
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`who entered into recording agreements with Defendants’ predecessors in the 1970s and "80s.'°
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`Phillips and Sobol, founding members of the punk rock band “The Dickies,” signed a recording
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`agreement in 1978 with A&M Records Limited (“A&M”), a predecessor of UMG,for their album
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`“Dawn of The Dickies,” which consisted of ten sound recordings.'! Wynn, Mehaffey, and Pellish,
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`membersof the alternative rock band “Dream Syndicate,” signed a recording agreement, also with
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`A&M, in 1983 for their album “Medicine Show,” which consisted of eight sound recordings.”
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`Dkt 95 at 41.
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`Dkt 149.
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`Dkt 95 at 16-35. Kasim Sulton,originally anotherplaintiffand proposed class representative
`in Plaintiffs’ motion for class certification (Dkt 150 at 3), is not listed as such here because
`this Court granted summary judgment dismissing Sulton’s copyright infringement claim
`after Plaintiffs’ motion for class certification wasfiled. Dkt 247.
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`Dkt 150 at 9.
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`Id. at 12.
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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 5 of 23
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`5
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`Straw Harris (“Straw”), a rock singer and songwriter, signed a recording agreement in 1987 with
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`Virgin Records, a predecessor of Capitol, for her first solo album “Surprise,” which consisted of
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`eleven sound recordings.’? Each ofthese agreements granted copyrights in the sound recordings to
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`A&M and Virgin Records, which were passed to UMG and Capitol, respectively.
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`Such deals are common in the music industry. In theory, artists who wish to release
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`and market their music may do so on their own, without the assistance of record labels. In reality,
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`however,it is impractical for most artists to proceed independently ofrecord labels, which offer the
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`means and resources to market and promoteartists’ works and are better positioned to accepttherisk
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`that the works might not succeed commercially.'* Many artists, especially those just starting out in
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`their careers, accordingly tend to havelittle negotiating power and often relinquish copyright in their
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`worksto record labels as part ofthe bargains theystrike for promotion and commercialization. As
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`a result, when a work turns out to be a “hit,” the lion’s share ofthe profits — along with the exclusive
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`rights to reproduce,distribute, and perform ~ usually belongto the record label rather than the artist
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`who authored or performedthe piece.”*
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`Recognizingthe “the unequal bargaining position of authors,” which results “in part
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`from the impossibility ofdetermining a work’s value until it has been exploited,” Congress enacted
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`
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`Id. at 16.
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`(or Group) do?,
`Berklee College of Music, What does a Recording Artist
`https://www.berklee.edu/careers/roles/recording-group-or-band#:~:text=The%20definiti
`on%200f%20a%20recording,that%20records%20and%20releases%20music(last accessed
`December 19, 2022).
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`17 U.S.C, § 106.
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 6 of 23
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`6
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`Section 203 in the 1976 amendments to the Copyright Act.'® That provision entitles an authorof a
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`work created on or after January 1, 1978 to terminate a transfer of copyright thirty-five years from
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`the date ofthe transfer or, in certain circumstances, forty years after the transfer’s execution if the
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`transfer covers the right to publication.” The termination right is not automatic. Instead, an author
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`must serve a written notice of termination that meets certain regulatory requirements,is recorded
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`with the Copyright Office, and is served uponthe granteepriorto the effective date oftermination.
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`Where those requirements are satisfied, the grant is terminated and the copyright reverts to the
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`author.’®
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`Pursuant to Section 203, Plaintiffs and other recording artists served written notices
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`oftermination on Defendants. But Defendants dispute their effectiveness. They pointto the fact that
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`the Section 203 termination right does not apply to a “work madeforhire,” which is defined as:
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`“(1) a work prepared by an employee within the scope ofhis or her employment; or
`(2) a work specially ordered or commissioned for use as a contribution to a collective
`work, as a part of a motion picture or other audiovisual work,as a translation, as a
`supplementary work, as a compilation, as an instructionaltext, as a test, as answer
`material for a test, or as an atlas, if the parties expressly agree in a written instrument
`signed by them that the work shall be considered a work made for hire.”!°
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`
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`ELR. Rep. No. 94-1476, 124 (Sept. 3, 1976).
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`17
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`17 U.S.C. § 203(a\(3) (“Termination of the grant may be effected at any time during a
`period offive years beginningat the end ofthirty-five years from the date of execution of
`the grant; or, ifthe grant coversthe right of publication ofthe work,the period beginsat the
`end ofthirty-five years from the date ofpublication of the work underthe grant orat the end
`of forty years from the date of execution of the grant, whicheverterm ends earlier.”).
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`17 U.S.C. § 203(a)(4), (b).
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`17 U.S.C. § 101,
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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 7 of 23
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`Defendants contend that all of Plaintiffs’ works fall within this exception.
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`As an initial matter, Defendants rely on the agreements by which the Plaintiffs
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`transferred their copyrights in the first place. All of them contain languagestating that the artists
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`were “employeesfor hire” ofthe record labels and/orthatthe artists’ recordings were “works made
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`for hire.””° Plaintiffs argue that these clauses do not suffice to establish that the works were made
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`for hire2! Indeed, Defendants do not contendthat the contractual language alone suffices.” Rather,
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`they argue that the sound recordings were made forhire because Plaintiffs produced the recordings
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`as employees acting within the scopeoftheir employmentand/orthat the recordings were “specially
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`ordered or commissionedfor use” as oneofthe enumerated categories in Section 101(2).” Plaintiffs
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`reject that argument. They arguetheir notices oftermination are effective and that Defendants are
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`infringing their copyrights and those ofother artists who also served termination notices pursuant
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`to Section 203 by failing to honortheir termination notices.
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`20
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`21
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`2
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`23
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`Dkt 214, Defs.’? Response to Pls.’ Rule 56.1 Statement of Undisputed Facts, at 31
`(Defendants do not dispute that “[t]he Dickies’ recording agreementreflects the parties’
`agreement that A&M Ltd. was the ‘owner and author’ ofall sound recordings and that The
`Dickies were A&M’s ‘employees for hire.”); id. at 58 (Defendants do not dispute that
`“Dream Syndicate’s recording agreement reflects the parties’ agreement that all sound
`recordings created thereunder constitute ‘works made for hire’ and that the members of
`Dream Syndicate were A&M’s ‘employeesforhire.’”); id. at 89 (Defendants do notdispute
`that “Straw’s recording agreementreflects the parties’ agreementthatall sound recordings
`created thereunderconstitute ‘works madeforhire’ and that Straw was Virgin’s ‘employee|]
`for hire.’”).
`
`Dkt 150 at 19.
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`Dkt 213 at 10.
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`Dkt 205-1 at 25-31.
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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 8 of 23
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`Plaintiffs now movefor an order certifying two proposed classes. Thefirst, “Class
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`8
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`A,” seeks actual and statutory damages, and is defined as:
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`“Ail recording artists (and statutory heirs and personal representatives of those
`recording artists, if applicable) who have served Defendants with Notices of
`Termination pursuant to the United States Copyright Act, 17 U.S.C. § 203,
`describing an effective date of termination for a particular sound recording (i)
`occurring on or after January 1, 2013, and (ii) occurring no later than the date the
`Court grants certification of Class A.”"*
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`The second, “Class B,” seeks declaratory relief, and is defined as:
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`“All recording artists (and statutory heirs and personal representatives of those
`recording artists, if applicable) who have served Defendants with Notices of
`Termination pursuant to the United States Copyright Act, 17 U.S.C. § 203,
`describing an effective date of termination for a particular sound recording (i)
`occurring on or after the date the Court grants certification of Class A, and (ii)
`occurting no later than December 31, 2031.”
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`Plaintiffs seek also to enjoin Defendants from infringing the copyrights ofartists who
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`served termination notices between January 1, 2013 and December31, 2031, regardless of whether
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`the effective dates of termination have been reached — i.e., members of both proposed classes.”*
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`Plaintiffs move to appoint Phillips, Sobol, Wynn, Mehaffey, and Pellish as class representatives of
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`Class A, Straw as class representative of Class B, and counsel for Plaintiffs as class counse
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`1.27
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`24
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`25
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`26
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`2]
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`Dkt 149 at 2.
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`Id.
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`Dkt 95 at 31, 41.
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`Dkt 149 at 1-2; Dkt 95 at 4,
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 9 of 23
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`Discussion
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`A district court may certify a class only if it determines that the class satisfies each
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`requirement of Rule 23(a) and at least one of the four criteria set out in Rule 23(b).* The party
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`moving for certification bears the burden of demonstrating that the proposed class meets these
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`criteria by a preponderanceofthe evidence.”
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`Defendants arguethat Plaintiffs havefailed to meet their burden on multiple grounds.
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`But the crux oftheir opposition is their contention that the need for individualized proof— especially
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`with respect to the work-made-for-hire defense — precludescertification of the proposed classes.
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`Based onthe individualized nature ofthe relevant inquires and the evidence in the record,the Court
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`agrees.
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`Proposed Class A - Rule 23(b}{3)
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`A proposed class seeking money damages, like Class A, mustsatisfy the requirements
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`of Rule 23(b)(3). A class may be certified under Rule 23(b)(3) only if:
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`“the court finds that the questions of law or fact commonto the membersofthe class
`predominate over any questions affecting only individual members, andthata class
`action is superior to other available methodsforthe fair and efficient adjudication of
`the controversy. The matters pertinent to the findings include: (A) the interest of
`members of the class in individually controlling the prosecution or defense of
`separate actions;
`(B) the extent and nature of any litigation concerning the
`controversy already commenced by or against members of the class; (C) the
`desirability or undesirability of concentrating the litigation of the claims in the
`
`28
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`29
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`Levitt v. J.P. Morgan Sec., Inc., 710 F.3d 454, 464 (2d Cir. 2013).
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`Teamsters Loc, 445 Freight Div. Pension Fund v. Bombardier inc., 546 F.3d 196, 202 (2d
`Cir. 2008).
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 10 of 23
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`particular forum; (D) the difficulties likely to be encountered in the managementof
`a class action.”
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`Questions of law or fact “predominate”if “resolution of someof the legalor factual
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`10
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`questions that qualify cach class member’s case as a genuine controversy can be achieved through
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`generalized proof, andif these particular issues are more substantial than the issues subject only to
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`individualized proof.”*! Predominance doesnotrequire the absence ofindividual issues.” Instead,
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`the requirement focuses on whetherliability can be determined on a class-wide basis by relying on
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`commonproof, even when damages issues may be individualized.” The predominancetest is a
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`qualitative, rather than quantitative, assessment,”and “calls upon courts to give careful scrutiny to
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`the relation between commonand individual questions.”””
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`30
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`31
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`32
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`33
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`34
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`Fed, R. Civ. P. 23(b)(3).
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`Moore v. PaineWebber, Inc., 306 F.3d 1247, 1252 (2d Cir. 2002}.
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`Sykes v. Mel S. Harris & Assocs. LLC, 780 F.3d 70, 81 (2d Cir. 2015).
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`Id.
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`in re Petrobras Sec., 862 F.3d 250, 271 (2d Cir, 2017).
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`Tyson Foods, Inc. v. Bouaphakeo, 577 U.S, 442, 453 (2016).
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 11 of 23
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`11
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`Work-Made-For-Hire Defense
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`Asthis Court previously acknowledged, “Defendants’ position that the worksat issue
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`were ‘made for hire’ is central to this lawsuit.” If an artist?s work was made for hire, the artist’s
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`copyright infringementclaim is not legally viable becausethe artist does not have a terminationright
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`pursuant to Section 203. Defendants argue their work-made-for-hire defense defeats predominance
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`becauseits determination requires “a fact-intensive inquiry based on various fact-basedtests that
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`cannot be resolved based on commonproof.”””
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`Employment Relationship - The Reid Test
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`Thefirst “fact-based test” is the multi-factortest set forth in Cmty. for Creative Non-
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`Violence vy. Reid® to determine whether an author was an employee and produced the work while
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`acting within the scope of his or her employment.” Reid “created an enduring frameworkfor
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`distinguishing between an employee and a non-employee author in matters of copyright." Built
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`on commonlaw principles ofagencyto distinguish between employees and independent contractors,
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`36
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`37
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`38
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`39
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`40
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`Waite v. UMG Recordings, Inc., No. 19-cv-1091 (LAK), 2020 WL 3959185,at *2(S.D.N.Y.
`July 13, 2020).
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`Dkt 205-1 at 26.
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`490 U.S. 730 (1989).
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`Horror Inc. v. Miller, 15 F 4th 232, 243 (2d Cir. 2021).
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`dd.
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 12 of 23
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`the Reidtest consists ofthirteen non-exhaustivefactors to consider in determining whether an author
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`was an employee and produced the work within the scope ofhis or her employment:
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`12
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`“(1) the hiring party’s right to control the manner and means by which the workis
`accomplished; (2) the skill required to create the work; (3) ihe source of the
`instrumentalities and tools; (4) the location of the work; (5) the duration of the
`relationship between the parties; (6) whetherthe hiring party has the right to assign
`additional projects to the hired party; (7) the extent of the hired party’s discretion
`over when and how long to work; (8) the method of payment; (9) the hired party’s
`role in hiring and paying assistants; (10) whether the work is part of the regular
`business of the hiring party; (11) whether the hiring party is in business; (12) the
`provision of employee benefits; [and] (13) the tax treatmentof the hired party."
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`Ofthe thirteen factors, there are “five core considerations”that “will almost always
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`be relevant ... and should be given more weight in the analysis”: “(1) the hiring party’s right to
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`control the manner and meansof creation; (2) the skill required [ofthe hired party]; (3) the provision
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`of employee benefits; (4) the tax treatment of the hired party, and (5) whether the hiring party has
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`the right to assign additional projects to the hired party.””’ Courts are “cautioned against applying
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`the Reid factors ‘in a mechanistic fashion,’” and instead must determine the weight, ifany, to accord
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`each factor“in light of the facts of a particular case.”””
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`Applyingthe Reidtestto theartists in proposed Class A requires evaluating evidence
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`unique to each artist. Whetherand to what degree a record label hadthe right to control the manner
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`and means of creation depends on the recordlabel’s involvement in the development of the sound
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`4l
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`42
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`43
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`id (citing Reid, 490 U.S. at 751-53).
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`Id, at 249 (quoting Aymes v. Bonelli, 980 F.2d 857, 861 (2d Cir, 1992)).
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`Id, at 248 (quoting Aymes, 980 F.2d at 862).
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`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 13 of 23
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`13
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`recording.“ For someartists, the record label’s involvement may have been limitedto “big picture
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`approval authority” that typically weighs against a right to control.” For other artists, the record
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`label may have been more involvedin the creative process. Evidence in the record ofat least some
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`involvement by the record labels raisesartist-specific questions such as: Did the record label agree
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`onthe lyrics and music with the artist? Did the recordlabel select the producers and sound engineers
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`to work on the sound recordings?” Whatlevel ofsubstantiveartistic feedback,if any, did the record
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`label provide during the making of the recordings?*’ Individualized evidence also is required to
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`determine whether the record label hadthe “right to assign additional and distinct projects during
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`the term of the engagement”and assigned additional “work notofthe artist[’s] choosing.”” The
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`ag
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`45
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`46
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`47
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`48
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`49
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`Id. at 250-51 (evaluating evidence to determine hiring party’s involvementin theartist’s
`creative process and the nature of the hiring party’s supervision of the artist’s work).
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`Id. at 250 (quoting HorrorInc. v. Miller, 335 F. Supp, 3d 273, 303 (D. Conn. 2018)).
`
`Dkt 214, Defs.’ Responseto Pls.’ Rule 56.1 Statement of Undisputed Facts, at 34 (“Phillips
`testified] that he could not recall how The Dickies became connected with producer Robin
`Cable, and that he could only speculate as to whether Mr. Cable had a contract with A&M,
`and that he did not know who was responsible for Mr. Cable coming on to produce Dawn
`ofThe Dickies.”(citing Dkt 211, Declaration ofLisa Gilford, Ex. D, Excerpts ofDeposition
`of Leonard G. Phillips, at 97:21-98:7, 98:17-99:14, 99:22-100:25).
`
`Id. at 55 (“Wynn testif[ied] that A&M representatives attended recording sessions for
`Medicine Show.”).
`
`Horror fne., 15 F.4th at 234.
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`Carter v. Helmsley-Spear, Inc., 71 F.3d 77, 86 (2d Cir. 1995).
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`

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`14
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`record label’s tax treatment of the artistand whether the record label provided any employee
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`benefits is another factor the Court would need to weigh on a case-by-case basis in its analysis ofthe
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`“totality of the parties’ relationship.
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`5951
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`Plaintiffs do not argue thatthe Court can assess the Reidfactorsfor the proposed class
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`based on common proof. They assert that “Defendants[] lack .. . any evidence of the indicia of
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`employment,”but fail to address the evidence in the record, which includes recording agreements
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`with material differences and contributions by the record labels to certain artists’ health insurance
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`premiumsand retirement pensions.” Rather than demonstrating that Defendants’ Reid defenseis
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`capable ofresolution based on generalized proof, Plaintiffs contend that the artists in the proposed
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`class “are not and never have been employeesof the recordlabels that signed them,.””?
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`Plaintiffs’ conclusory response to Defendants’ argumentis unresponsive with respect
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`to the predominance analysis, which is concerned not with the answerto the question as to each
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`50
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`51
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`52
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`Although certain artists, such as The Dickies, submitted Internal Revenue Service W-4
`Formsto the record label, counsel for Defendants admitted during argumentthat they do not
`have copies of any W-2 tax withholding forms for proposed class members. The fact that
`the record labels did not withhold taxes weighs against a finding that there was an
`employmentrelationship, but is not dispositive under Reid and its progenies.
`
`SHL Imaging, Inc. v. Artisan House, Inc., 117 F. Supp. 2d 301, 312 ($.D.N.Y. 2000); see
`also Salamon v. Our Lady of Victory Hosp., 514 F.3d 217, 231 (2d Cir. 2008), as amended
`(Apr. 22, 2608) (commenting while applying Reid in a non-copyright context that “the
`analysis of any employmentrelationship is fact-specific”).
`
`Dkt 220 at 13,
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`Dkt 208-119-24 (contributions by record labels to artists’ health insurance premiums and
`pension plans); Dkt 207-29 (“payroll” and “health and welfare” payments to The Dickies).
`
`Dkt 220 at 13 (emphasis omitted).
`
`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 15 of 23
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`individual artist but with whether “evidence that varies from member to member” is required to
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`answerthat question.’ The Court makes no determination at this stage as to whether any Plaintiff
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`or proposed class member was an employee ofthe relevant record label. It merely concludesthat
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`this determination will depend on facts peculiar to each proposed class member.
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`15
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`Section 101(2) - Specially Commissioned Works
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`The second work-for-hire test, whether the works were “specially commissioned”
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`pursuant to Section 101(2) of the Copyright Act, also requires a highly individualized inquiry.
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`Section 101(2) provides that a work was made for hire if it was: (1) “specially ordered or
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`commissioned,”(2) “for use as” one ofnine enumerated categories, and (3) “ifthe parties expressly
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`agree[d] in a written instrument signed by them that the work shall be considered a work made for
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`hire.” Defendants argue that whether the sound recordings were specially commissioned “as a
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`‘contribution to a collective work’ or ‘compilation,’” two of the nine enumerated categories, is
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`“heavily fact-dependent and not subject to common proof.”
`
`To determine whether a work was“specially ordered or commissioned,” the “instance
`
`and expense” test applies.°’ This “turns on the parties’ creative and financial arrangement as
`
`54
`
`55
`
`57
`
`Tyson Foods, Inc., 577 U.S. at 453.
`
`17 U.S.C. § 101€2).
`
`Dkt 205-1 at 29,
`
`Playboy Enterprises, Inc. vy. Dumas, 53 F.3d 549, 562 (2d Cir. 1995) (“It appears, therefore,
`that the phrase ‘specially ordered or commissioned’ has essentially the same meaning as
`‘instance and expense.””),
`
`

`

`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 16 of 23
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`16
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`revealed by the record in each case.”** ““Instance’ refers to the extent to which the hiring party
`
`provided the impetusfor, participated in, or had the powerto supervise the creation ofthe work.”
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`The “expense” componentrefers to the resourcesthe hiring party invest[ed] in the creation of the
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`work”and in somecases focuseson the nature of the payment; payments of a sum certain weigh in
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`favorof a work-for-hire relationship while royalty payments do not.’ Similar to the Reid test, the
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`instance and expense analysis requires understanding for eachartist the circumstances in which the
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`recordings were produced, the creative involvement, if any, of the record label, and the types of
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`resources and payments the record label providedto the artist.
`
`Plaintiffs do not dispute that the instance and expense assessmentis an individualized
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`inquiry. Instead, they argue the Section 101(2) defense is unavailable to Defendants because “the
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`sound recordingsat issue inthis action were not commissionedas contributionsto ‘collective works’
`
`or ‘compilations.’”*' Although “sound recordings”are notlisted in Section 101(2), “something that
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`happens to be a sound recording maystill be eligible as a specially commissioned work,as long as
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`it simultaneously qualifies under one ofthe statutorily enumerated categories.”
`
`Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 140 (2d Cir. 2013) (emphasis added).
`
`59
`
`60
`
`él
`
`62
`
`id. at 139.
`
`fd. at 139-40.
`
`Dkt. 220 at 13.
`
`1 NIMMER ON COPYRIGHT(hereinafter “NIMMER”) § 5.03, n.121.4; see also Stanacard, LIC
`vy. Rubard, LLC, No. 12-cv-5176, 2016 WL 462508, at *8 (S.D.N.Y. Feb. 3, 2016)
`(“[C]ourts have held that computer programs used together as a software system qualify as
`‘compilations’ or ‘collective works’ within the meaning of § 101(2).”).
`
`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 17 of 23
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`17
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`Whether a sound recording qualifies as a contribution to a collective work or
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`compilation is a fact-intensive question that requires investigating the circumstances in which the
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`sound recording was produced and released.” A “collective work”is a “work .. . in which a number
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`of contributions, constituting separate and independent works in themselves, are assembledinto a
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`collective whole,” and may include a CD or album consisting of sound recordings.” “The term
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`‘compilation’ includes collective works.”© A soundrecordingthat is part of an album may qualify
`
`as a contribution to a collective work “depend[ing] on the facts of the putting of an album
`
`together.” For example,did the album “result[] from the efforts of bonafide employees ofrecord
`
`labels as sound engineers?’ Were the producersof the album hired by the record label? As one
`
`63
`
`64
`
`65
`
`66
`
`67
`
`NIMMER § 5.03 (“Only massive excavation into the circumstances under whichall sound
`recordings were prepared during the two decades beginning in 1978 could answer th[e]
`question [whether pre-1999 soundrecordings, as a factual matter, routinely qualified as
`contributions to collective works].”).
`
`17 U.S.C. § 101.
`
`.
`.
`A “compilation”is “formed by the collection and assembling of preexisting materials .
`that are selected, coordinated, or arranged in such a way that the resulting work as a whole
`constitutes an original work of authorship.” Jd I discuss only contributions to collective
`works here because a “contribution to a compilation .
`.
`. will not qualify as a work made for
`hire” unless the “compilation .. . also constitutes a collective work.” NIMMER § 5.03, n.1 15.
`
`United States Copyright Office and Sound Recordings as Work Made For Hire: Hearing
`Before the Subcomm. On Cts. and Intell. Prop. of the Comm. On the Judiciary H.R., 106
`Cong.101 (2000) (statement ofMarybeth Peters, Register ofCopyrights ofthe United States
`Copyright Office); see also id. 106 Cong. 98 (statement ofRep. Howard Berman) (“It could
`very well be that the courts will find, when theystart ruling on these cases, that in 2013
`some sound recordings are works made for hire and other sound recordings aren’t works
`made for hire and some sound recordings are contributions to a collective works or a
`compilation and others aren’t.”).
`
`NIMMER § 5.03.
`
`

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`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 18 of 23
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`18
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`senator commented during proceedings on an amendment to remove, effective as of 1999, sound
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`recordings from the works that may be made for hire, “the facts can vary so widely — some albums
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`are primarily the product of the producer, some of one artist, some of a group, many have hired
`
`musicians or technicians who contribute but do so as part of their normal employment... 768
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`Plaintiffs have not provided any evidenceto demonstrate that the threshold question
`
`ofwhetherthe artists’ sound recordings qualify as contributions to collective works can be resolved
`
`based on commonproof. Asa result, even ifthe requirementthat the parties agreed in writing that
`
`the works were madefor hire could be ascertained easily from each artist's recording agreement,
`
`determining whether each sound recording was a contribution to a collective work and madeat the
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`instance and expense of the record label would require individualized inquiries that undermine
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`predominance.
`
`Other Individual Issues - Validity of Termination Notices
`
`Defendants raise a numberof other issues that, they argue, preclude a finding of
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`predominance,including the validity of an artist’s termination notice. For a termination notice to
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`be valid, it must contain “clear identification”of certain information:
`
`“(i) A statementthat the termination is made under section 203; (ii) The name of
`each grantee whose rights are being terminated, or the grantee’s successor in title,
`and each address at which service of the notice is being made; (iii) The date of
`execution of the grant being terminated and, if the grant covered the right of
`publication of a work, the date of publication of the work under the grant; (iv) For
`each work to which the notice of termination applies, the title of the work and the
`name ofthe authoror, in the case of a joint work,the authors who executedthe grant
`
`
`
`68
`
`Making Certain Corrections in Copyright Law: Senate Proceeding on FLR. 5107, 106th
`Cong. 2, 146 Cong. Rec. $10498-01, $10498 (2000) (Statement of Senator Orrin Hatch).
`
`

`

`Case 1:19-cv-01091-LAK Document 265 Filed 01/27/23 Page 19 of 23
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`being terminated; and,ifpossible and practicable, the original copyright registration
`number; (v) A briefstatement reasonably identifying the grant to which the notice of
`termination applies;
`(vi) The effective date of termination; and [(additional
`requirements in cases where the author has died)].°
`
`19
`
`Evenif some ofthis information is missing or incorrect, a termination noticestill may be valid ifthe
`
`errors are harmless and “do not materially affect the adequacy of the information required to serve
`
`the purposes of [Section 203]” and/or were made in goodfaith “without any intention to deceive,
`
`mislead or concealrelevant information.””
`
`Thevalidity of an artist’s termination notice requires individualized evaluation. For
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`each termination notice that contains defects,’! the Court would need to assess whether those defects
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`constitute ha