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`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`UNITED STATES COURT OF APPEALS
`FOR THE SECOND CIRCUIT
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`SUMMARY ORDER
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`
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`Rulings by summary order do not have precedential effect. Citation to a
`summary order filed on or after January 1, 2007, is permitted and is
`governed by Federal Rule of Appellate Procedure 32.1 and this Court’s Local
`Rule 32.1.1. When citing a summary order in a document filed with this
`Court, a party must cite either the Federal Appendix or an electronic
`database (with the notation “Summary Order”). A party citing a summary
`order must serve a copy of it on any party not represented by counsel.
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`At a stated term of the United States Court of Appeals for the Second Circuit,
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`held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the
`City of New York, on the 23rd day of August, two thousand and eighteen.
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`Present:
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`
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`Creazioni Artistiche Musicali, S.r.l.,
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` Plaintiff-Appellant,
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`v.
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`Carlin Am., Inc., Edward B. Marks Music
`Company,
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` Defendants-Appellees,
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`John Does 1-10,
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`
`
`17-266-cv
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`Defendants.
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`1
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`ROBERT D. SACK,
`PETER W. HALL,
`CHRISTOPHER F. DRONEY
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`Circuit Judges.
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`
`
`

`

`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`For Plaintiff-Appellant:
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`
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`Robert W. Clarida (Brett Van Benthysen, on the
`brief), Reitler Kailas & Rosenblatt LLC, New York,
`NY.
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`For Defendants-Appellees:
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`
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`Appeal from a final judgment and decision entered December 30, 2016, in the
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`Eric C. Osterberg, Osterberg LLC, Boston, MA.
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`United States District Court for the Southern District of New York (Sullivan, J.).
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`
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`UPON DUE CONSIDERATION,
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`IT
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`IS HEREBY ORDERED,
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`ADJUDGED, AND DECREED that the district court’s decision and judgment are
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`AFFIRMED.*
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`Creazioni Artistiche Musicali, S.r.l. ("CAM") brings a copyright-infringement
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`action against the defendants-appellees, Carlin America, Inc. and Edward B. Marks
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`Music Company, pursuant to the United States Copyright Act, 17 U.S.C. § 106. CAM
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`alleges that in a written agreement executed on October 4, 1966, in Rome, Italy (the
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`"1966 Agreement"), it obtained copyrights in two works ("Instrumental" and "Vocal")
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`written in 1966 by the Italian composer Piero Umiliani. CAM claims that the
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`defendants infringed these copyrights by granting licenses to a third work by
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`Umiliani in 1968, "Mah Na Mah Na," to third parties. Specifically, CAM contends
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`that "Mah Na Mah Na" is an unauthorized derivative work based on Instrumental
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`and Vocal.
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` *
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` Appellant's motion for judicial notice is denied as moot, as the documents we have been asked to
`take judicial notice of are not material to this decision.
`2
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`

`

`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`The district court granted the defendants' motion to dismiss, concluding that
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`
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`CAM lacked standing to bring suit against the defendants for copyright infringement
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`because the 1966 Agreement, as interpreted under Italian law, did not give CAM the
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`exclusive right to create and exploit derivative works of Instrumental and Vocal. See
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`Creazioni Artistiche Musicali, S.r.l. v. Carlin Am., Inc., No. 14-cv-9270, 2016 WL
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`7507757, 2016 U.S. Dist. LEXIS 180431 (S.D.N.Y. Dec. 30, 2016). CAM timely
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`appealed the district court's judgment of dismissal. We assume the parties'
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`familiarity with the underlying facts, the procedural history, the arguments
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`presented on appeal, and the district court's ruling, which we reference only to
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`explain our decision.
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`"We review de novo a [district court's] decision as to a plaintiff's standing to
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`sue based on the allegations of the complaint and the undisputed facts evidenced in
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`the record." Rajamin v. Deutsche Bank Nat'l Trust Co., 757 F.3d 79, 84–85 (2d Cir.
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`2014). Under Federal Rule of Civil Procedure 44.1, a court's determination of foreign
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`law "must be treated as a ruling on a question of law," Fed. R. Civ. P. 44.1, and is
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`therefore subject to de novo review. See Curley v. AMR Corp., 153 F.3d 5, 11 (2d Cir.
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`1998). To that end, "appellate courts, as well as trial courts, may find and apply
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`foreign law," id. at 12, and "may consider any relevant material or source, including
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`the legal authorities supplied by the parties on appeal as well as those authorities
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`presented to the district court," Carlisle Ventures, Inc. v. Banco Español de Crédito,
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`S.A., 176 F.3d 601, 604 (2d Cir. 1999).
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`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`The Copyright Act's standing test, 17 U.S.C. § 501(b), "accords standing only
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`to the legal or beneficial owner of an 'exclusive right.'" Itar-Tass Russ. News Agency
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`v. Russ. Kurier, Inc., 153 F.3d 82, 91 (2d Cir. 1998). Umiliani transferred rights to
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`his music, including Instrumental and Vocal, to CAM in the 1966 Agreement, but the
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`parties dispute whether Umiliani granted CAM the exclusive right to exploit
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`derivative versions of his works. In resolving this dispute, the district court identified
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`choice-of-law as a threshold issue and determined that Italian, rather than American,
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`law applies to determine the scope of Umiliani's transfer in the 1966 Agreement.
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`Creazioni Artistiche Musicali, 2016 WL 7507757, at *3–5, 2016 U.S. Dist. LEXIS
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`180431, at *6–13. CAM contends that this was error and that American law applies
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`instead. Appellant Br. at 13–16. We need not reach this choice-of-law issue, however,
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`because the result is the same regardless of whether the 1966 Agreement is construed
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`according to Italian or American law.†
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`Both Italian and American law require a clear expression of intent for an
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`author to transfer full ownership of copyrights in his or her works. Under the 1909
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`Copyright Act, which was in effect at the time the 1966 Agreement was made, "a
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`transfer of anything less than the totality of rights commanded by copyright was
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`
`
` †
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` The district court noted that we have not yet established a principle for choice-of-law issues
`concerning voluntary assignment of copyright. Creazioni Artistiche Musicali, 2016 WL 7507757, at
`*3, 2016 U.S. Dist. LEXIS 180431, at *8–9. We decline to establish such a principle here because the
`result of the overall standing issue is the same under either Italian or American law. We also note
`that the issue of the applicable choice-of-law principle for copyright assignment was not thoroughly
`briefed on appeal.
`4
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`

`

`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`automatically a license rather than an assignment of the copyright." P.C. Films Corp.
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`
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`v. MGM/UA Home Video Inc., 138 F.3d 453, 456 (2d Cir. 1998); see also Warner Bros.
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`Pictures, Inc. v. Columbia Broadcasting Sys., 216 F.2d 945, 949 (9th Cir. 1954) ("The
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`clearest language is necessary to divest the author of the fruits of his labor." (internal
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`quotation marks omitted)).
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`Similarly, although the Italian Copyright Act provides that the economic rights
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`of authors "may be acquired, alienated or transferred under all methods and forms
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`allowed by law," Art. 107, Italian Copyright Act, App'x at 157, the "narrow
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`construction of copyright transfers . . . applies, as a matter of principle, to any
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`contractual transfer of interests from the author to another party," Alberto Musso &
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`Mario Fabiana, Italy §§ 4(3)(a)(ii), 4(3)(b)(i), in International Copyright Law and
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`Practice (Paul Edward Geller & Lionel Bentley, eds. 2013). Indeed, the exclusive
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`rights stemming from copyright ownership "are independent of one another," Art. 19,
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`Italian Copyright Act, App'x at 136, so "the contractual grant of one such right does
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`not necessarily include the grant of the exclusive exercise of each of the other rights"
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`and "any total assignment of all the economic components of copyright must be
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`expressly agreed to," Musso & Fabiani, Italy § 4(2)(a).
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`We conclude that the 1966 Agreement lacks the clear expression of intent
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`necessary to transfer full ownership of Instrumental and Vocal to CAM, which
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`necessarily includes the right to create and exploit derivative works. The second
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`paragraph of the 1966 Agreement defines the scope of Umiliani's transfer to CAM:
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`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`(2) All rights to use the music that [Umiliani] composed, from the time of its
`creation, shall be transferred to us for the entire world with the right to
`transfer it in whole or in part to third parties, so long as your rights are not
`prejudiced or limited. [Umiliani] also gives us the right to extract one or more
`musical excerpts from the soundtrack for any adaptations or arrangements
`that we deem necessary for the best commercial use and to add any lyrics to
`the individual musical tracks with the full freedom to choose the author and
`the works so long as your moral rights are not prejudiced.
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`1966 Agreement, App'x at 35. Although the first sentence grants CAM "all rights to
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`use the music that [Umiliani] composed," it limits the scope of this grant by
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`stipulating that Umiliani's rights may "not [be] prejudiced or limited." Id.
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`Therefore, notwithstanding the transfer of all rights to use Umiliani's music to
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`CAM for certain purposes, Umiliani retains certain other rights in the music,
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`including the right to create derivative works. In other words, the first sentence of
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`paragraph two transfers certain rights to CAM, but this transfer is not exclusive
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`and Umiliani retains certain economic rights in the music.
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`The second sentence of paragraph two provides additional support for this
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`interpretation. The second sentence gives CAM "the right to extract one or more
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`musical excerpts from the soundtrack for any adaptations or arrangements." Id. If
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`the first sentence of paragraph two represented a total conveyance of rights in
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`Instrumental and Vocal, as CAM contends, then the second sentence would be
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`redundant: the right to create derivative works would have already been conveyed
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`to CAM in the total grant in the first sentence of the paragraph, so there would be
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`no need to separately convey "the right to extract one or more musical excerpts from
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`6
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`17-266
`Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc.
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`the soundtrack." Id.; see also Italian Civil Code, Ch. IV, Art. 1367, App'x at 185 ("In
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`
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`case of doubt, the contract or the individual clauses shall be interpreted in the sense
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`in which they can have some effect, rather than in that according to which they
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`would have none . . .")
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`For these reasons, we conclude that the 1966 Agreement does not
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`unequivocally convey to CAM exclusive rights over Instrumental and Vocal.
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`Because CAM lacks the exclusive right to exploit derivative works of Instrumental
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`and Vocal, CAM lacks standing to bring suit against the defendants for copyright
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`infringement.
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`We have considered the plaintiffs' remaining arguments and find them to be
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`without merit. Accordingly, the district court's judgment and decision and order are
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`AFFIRMED.
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`FOR THE COURT:
`Catherine O’Hagan Wolfe, Clerk
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