IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF TENNESSEE
`NASHVILLE DIVISION
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`ISAAC DONALD EVERLY,
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`Plaintiff,
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`v.
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`PATRICE Y. EVERLY, PHILLIP J.
`EVERLY, CHRISTOPHER EVERLY,
`THE PHILLIP EVERLY FAMILY
`TRUST and EVERLY AND SONS
`MUSIC (BMI),
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`Defendants.
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`Case No. 3:17-cv-01440
`Judge Aleta A. Trauger
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`MEMORANDUM
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`Before the court are the defendants’ Motion for Judgment as a Matter of Law and
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`Memorandum of Law in Support (Doc. No. 69), and the plaintiff’s Motion for Partial Summary
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`Judgment, filed with a separate Memorandum (Doc. Nos. 70, 71). For the reasons stated herein,
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`the plaintiff’s motion will be granted, and the defendants’ motion will be denied.
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`I.
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`FACTUAL BACKGROUND1
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`Isaac Donald Everly (“Don” or “Don Everly”), the plaintiff in this action, and Phillip
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`Everly (“Phil” or “Phil Everly”), who died in 2014, are brothers and were members of the music
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`group, the Everly Brothers. (Doc. No. 19-1 ¶ 2.) The Everly Brothers dissolved and Don and Phil
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`Everly stopped speaking in 1973. (Id. ¶ 11.)
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`Phil Everly is survived by his third wife, Patrice Everly (“Patti Everly”), and two sons,
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`Phillip J. Everly (“Jason Everly”) and Christopher Isaac Everly (“Chris Everly”). Patti, Jason, and
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`1 The facts set forth herein are undisputed, except as otherwise noted.
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`2
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`Chris Everly are the defendants in this action.
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`One of the Everly Brothers’ most famous hits was the song “Cathy’s Clown,” which was
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`recorded and released in 1960. (Doc. No. 19-1 ¶ 4; Doc. No. 1-2; Doc. No. 19-9.) Don and Phil
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`Everly are both listed as “authors” on the original copyright registrations for “Cathy’s Clown.” By
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`agreement dated March 21, 1960 (the “1960 Grant”), Don and Phil Everly assigned 100% of the
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`worldwide copyright in “Cathy’s Clown” to Acuff-Rose Publications (“Acuff-Rose”). (Doc. No.
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`1-1.) Even after assigning the copyright in “Cathy’s Clown” to Acuff-Rose, Don and Phil retained
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`the contractual right to the so-called songwriter’s share of royalties derived from the song. (Id.;
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`Doc. No. 23 ¶ 4.)
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`From 1960 to 1980, “Cathy’s Clown” was credited on all copies as having been authored
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`by both Don and Phil, and they shared the composition’s songwriter royalties equally. They also
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`publicly described the process of writing the song as a joint effort. For instance, in 1972, Don and
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`Phil were interviewed on The David Frost Show, during which Don stated that the brothers wrote
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`“Cathy’s Clown” together, and Phil described how they worked together on the song. (Doc. No.
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`37.)
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`The crux of this dispute arises from the fact that Don Everly now claims sole authorship of
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`“Cathy’s Clown” (see Doc. No. 19-1 ¶¶ 3, 6; Doc. No. 19-5, Don Everly Dep. 11, 222) and seeks
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`a judicial declaration to that effect. Although that contention is in dispute, and the events leading
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`up to Phil’s execution of a document entitled “Release and Assignment” (the “1980 Release”) are
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`contested, there is no dispute that, on June 10,1980, Phil signed this 1980 Release, which, first,
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`2 The deposition transcripts filed by the parties are condensed versions, containing four
`pages of the original transcript on each page. Some of the transcripts are excerpts rather than
`complete copies. The page numbers provided herein are those assigned to the original deposition
`transcript.
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`3
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`acknowledges that Don and Phil entered into the 1960 Grant “transferring” “Cathy’s Clown” to
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`Acuff-Rose as publisher and that the 1960 Grant “listed both Phil Everly and Don Everly as
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`composers” of “Cathy’s Clown.” (Doc. No. 1-3.) In pertinent part, the 1980 Release then states
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`that Phil “desires to release, and transfer, to [Don] all of his rights, interests and claim in and to
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`[“Cathy’s Clown”], including rights to royalties and his claim as co-composer, effective June 1,
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`1980.” (Id.) In exchange for the recited consideration of $1.00, Phil did “transfer, release, assign
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`and set over unto Don . . . all of his rights, titles, interests and claim to” “Cathy’s Clown”, the
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`copyright to which was noted still to be owned by Acuff-Rose. (Id.) The transfer “include[d] not
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`only [Phil’s] right to royalties and other income arising out of [“Cathy’s Clown”] from and after
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`the effective date, but also every claim of every nature by him as to the composition[] of said
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`song[].” (Id.) Finally, the 1980 Release directed Acuff-Rose and the performing rights society,
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`Broadcast Music, Inc. (“BMI”), to “correct their records accordingly and to make payments of
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`amounts due and to become due to the said Don Everly solely on and after the effective date” of
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`the agreement. (Id.)
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`The 1980 Release was recorded in the United States Copyright Office and filed with BMI
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`and Acuff-Rose shortly thereafter. (Doc. No. 19-9, at 2; (Doc. No. 19-1 ¶¶ 17, 18.) BMI and Acuff-
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`Rose Publications modified their records to reflect that Don Everly was the sole “author” of
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`“Cathy’s Clown” (Doc. No. 19-11, at 2, 5), and they ceased payment of any songwriter royalties
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`to Phil Everly (Doc. No. 19-5, Don Everly Dep. 22; Doc. No. 19-1 ¶18).
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`After execution of the 1980 Release and in accordance with its terms, Don Everly was
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`publicly credited as the sole author of “Cathy’s Clown” and was paid 100% of the songwriter’s
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`share of royalties for “Cathy’s Clown.” (Doc. No. 19-1 ¶¶ 20 and 24; Doc. No. 19-3, Jason Everly
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`Dep. 45, 99.) After the filing of the 1980 Release, Sony issued hundreds of licenses designating
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`4
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`Don Everly as the sole author of “Cathy’s Clown.” (Doc. No. 19-9, at 26–38.) In 1990, Reba
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`McEntire’s cover recording of “Cathy’s Clown” earned the Robert J. Burton Award for BMI
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`Country Song of the Year, an award that was presented to Don Everly as the sole songwriter at an
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`awards celebration that Don attended without Phil Everly. (Doc. No. 19-5, Don Everly Dep. 27–
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`28; Doc. No. 19-1 ¶ 20.) Phil Everly was aware that Don Everly alone had been accorded this
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`award. (Doc. No. 19-3, Jason Everly Dep. 19.) Prior to 1980, both Don and Phil Everly had been
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`awarded songwriting honors for “Cathy’s Clown” by BMI. (See Doc. No. 19-11, at 8–9 (program
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`for 1961 BMI award dinner).) In addition, the 1984 biography of the Everly Brothers, Walk Right
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`Back, reports Phil’s description of the writing of “Cathy’s Clown” as follows:
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`Don called me and said he’d started writing a song and could I come over. He’d
`written the chorus of Cathy’s Clown and had the melody for the verses. I just put
`together the verses and it was finished. We went into the studio and cut in maybe
`two days and we knew it was a hit.
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`(Doc. No. 19-5, at 11–12, Don Everly Dep. Ex. 2.) In a 1984 television interview, the brothers
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`seemed to corroborate that version of events. (Doc. No. 37.) In a booklet for the Everly Brothers’
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`1994 box set Heartaches and Harmonies, Phil is reported to have similarly stated: “Donald had
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`the chorus for [“Cathy’s Clown”]. I went over to his house, because we lived across the street
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`[from each other] at that time, and wrote the verses—although my name’s not on it any longer.”
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`(Doc. No. 41-1, at 11.) The defendants also allege that Phil continued to privately maintain that he
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`was a co-author of the song. (See, e.g., Doc. No. 19-3, Jason Everly Dep. 67; Doc. No. 19-4, J.
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`Paige Dep. 14.) Nonetheless, from June 10, 1980, when the 1980 Release was executed, until his
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`death in 2014, Phil Everly never brought a legal action to challenge Don Everly’s claim of sole
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`authorship of “Cathy’s Clown” or the enforceability of the 1980 Release. (Doc. No. 19-2, Patti
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`Everly Dep. 30.)
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`5
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`In January 1988, Acuff-Rose, as the “duly authorized agent of Don Everly,” renewed the
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`copyright to “Cathy’s Clown.” (Doc. No. 1-5.) Don Everly is the sole renewal claimant and the
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`sole “author” of the words and music to “Cathy’s Clown” identified on the Certificate of Renewal
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`Registration. (Id. at 2.)
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`In 2011, Don Everly engaged counsel to exercise his United States copyright termination
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`rights with respect to “Cathy’s Clown” by filing a notice to terminate the 1960 Grant pursuant to
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`17 U.S.C. § 304(c)3 and recapture 100% of the United States copyright in “Cathy’s Clown,”
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`effective April 14, 2016 and recorded in the U.S. Copyright Office effective July 15, 2011 (the
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`“2011 Don Everly Notice of Termination”). (Doc. No. 1-6, at 4–5; Doc. No. 19-12 ¶ 12; Doc. No.
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`19-1 ¶ 21.) As a result of the exercise of his termination rights, Don Everly claims exclusive
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`copyright ownership in “Cathy’s Clown.”
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`Also in 2011, Don authorized his attorney to file paperwork in the U.S. Copyright Office
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`to remove Phil’s name as author of “Cathy’s Clown” on the original 1960 copyright registration.
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`(Doc. No. 19-12 ¶ 13.) In response to that directive, Don’s attorney filed forms with the U.S.
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`Copyright Office stating, “Corrected Information: Delete Phil Everly,” and further explaining,
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`“Copyright claimant/publisher, Acuff-Rose Publications, mistakenly listed Phil Everly as co-
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`author, however, Don Everly is the sole author as confirmed by the agreement signed by Phil
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`Everly . . . .” (Doc. No. 19-12, at 26–27, 30–31, 42–43.) The U.S. Copyright Office rejected the
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`forms, explaining that corrections to pre-1978 copyright registrations had to be filed within 28
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`years of the initial registration. (Id. ¶ 13.)
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`3 Section 304(c) provides that an author’s “exclusive or nonexclusive grant of a transfer or
`license of the renewal copyright or any right under it, executed before January 1, 1978” may be
`terminated under certain conditions. Section 203(a) similarly provides for the termination of
`copyright grants, but it applies to grants executed by the author “on or after January 1, 1978.”
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`6
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`In 2007, Phil Everly engaged Lewis Anderson to file notices of termination, that is, to
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`exercise his termination rights, with respect to three specific songs, but not for “Cathy’s Clown.”
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`(Doc. No. 19-7, L. Anderson Dep. 19, 22–23, 28.) In 2012, Phil engaged Copyright Recapture to
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`assist him in exercising his termination rights with respect to twenty-two additional songs.
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`“Cathy’s Clown” was not among these songs and was not listed on any of the notices of termination
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`prepared by Copyright Recapture. (Doc. No. 19-13, at 9–25.)
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`Following Phil’s death in early 2014, Patti Everly and Jason Everly filed their own notice
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`purporting to terminate the 1960 Grant and the extended renewal term of the copyright for “Cathy’s
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`Clown,” effective November 14, 2016 (the “2014 Notice of Termination”), pursuant to 17 U.S.C.
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`§ 304(c). (Doc. No. 1-7, at 4–9.) In 2016, Patti and Jason served on Don Everly a Notice of
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`Termination (the “2016 Notice of Termination”), purporting to terminate all rights granted by Phil
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`to Don Everly in the 1980 Release, pursuant to 17 U.S.C. § 203(a). (Doc. No. 1-8.)
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`II.
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`PROCEDURAL BACKGROUND
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`Plaintiff Don Everly filed his Complaint for Declaratory Judgment (Doc. No. 1) on
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`November 8, 2017, against Patti Everly, Jason Everly, and Chris Everly as the statutory successors
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`to Phil Everly’s termination rights under the United States Copyright Act (“Copyright Act”),
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`specifically 17 U.S.C. §§ 304(c) and 203(a), and against the Phillip Everly Family Trust (“Trust”)
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`and Everly and Sons Music (BMI) (alleged to be an assumed name for the Trust (Doc. No. 1 ¶ 8)),
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`as a legal owner or successor to Phil Everly’s rights or as a legal owner of the statutory successors’
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`rights (collectively “defendants”). The Complaint contains three “Counts,” each seeking a judicial
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`declaration. Count 1 seeks a declaration that Phil Everly is not an “author” of “Cathy’s Clown”
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`and, therefore, that the defendants are not the statutory successors of an “author” with respect to
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`“Cathy’s Clown” and are estopped from exercising any rights granted to “authors” of copyrighted
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`works, including the filing of a Notice to Terminate the 1960 Grant. Count 2 seeks a declaration
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`7
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`that the 1980 Release is not a grant of a transfer or license of copyright or of any right under a
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`copyright and, therefore, is not subject to termination pursuant to 17 U.S.C. § 203(a), thus
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`invalidating the 2016 Notice of Termination of the 1980 Release served on the plaintiff by the
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`defendants. And Count 3 seeks a declaration that Don Everly owns 100% of the U.S. copyright in
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`“Cathy’s Clown” and 100% of the songwriter royalties derived from that work. (Doc. No. 1, at
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`12–13.)
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`The defendants filed an Answer, Affirmative Defenses, and Counterclaim (Doc. No. 5) on
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`November 29, 2017. Their Counterclaim seeks declarations that Phil Everly is an author of
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`“Cathy’s Clown” “pursuant to 17 U.S.C. § 203”; that the defendants’ Notices of Termination were
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`valid under 17 U.S.C. §§ 304(c) and 203(a); and that the defendants are entitled to half of the
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`income derived from the exploitation of “Cathy’s Clown.” (Doc. No. 5, at 7.)
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`The court issued an order granting summary judgment to plaintiff Don Everly on
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`November 6, 2018. (Doc. No. 27.) In the accompanying Memorandum, the court found that Don’s
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`2011 Notice of Termination, considered in conjunction with all of the events that had taken place
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`before it, constituted a plain and express repudiation of Phil’s authorship of “Cathy’s Clown” and,
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`therefore, that the defendants’ Counterclaim for a declaration that Phil is an author of that song
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`was barred by the three-year statute of limitations in 17 U.S.C. § 507(b), applicable to authorship
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`claims. (See Doc. No. 26, at 17.) The court also found that the defendants’ identical defense to the
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`plaintiff’s sole claim of authorship was time-barred and that the plaintiff was entitled to judgment
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`in his favor on Counts I and III of the Complaint.
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`Notably, for purposes of the present motions, the court did not reach the plaintiff’s
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`alternative basis for relief set forth in Count II of the Complaint. In addition, the court subsequently
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`denied the defendants’ Rule 59(e) motion and declined to consider the new arguments raised
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`8
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`therein, specifically the defendants’ claim that the statute of limitations cannot be used to bar an
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`affirmative or factual defense—as opposed to an affirmative claim for relief—and that the court
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`erred as a matter of law in concluding that the defendants’ rights to claim co-ownership of the
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`copyright were waived before their termination rights even accrued. (Doc. No. 43.)
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`The Sixth Circuit reversed and remanded, finding that a material factual dispute existed as
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`to whether Don had expressly repudiated Phil’s authorship of “Cathy’s Clown.” Everly v. Everly,
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`958 F.3d 442 (6th Cir. 2020).4 This court has construed the scope of the remand as general rather
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`than limited, as a result of which “all claims at issue in the Complaint and Counterclaim remain
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`pending, effectively without limitation.” (Doc. No. 65, at 4.)5 As the court explained in addressing
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`a motion by the defendants to clarify the scope of the remand, besides sending Counts I and III
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`back to the starting line, the general remand also means that the plaintiff’s Count II, which the
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`court dismissed as moot, is reinstated and that the defendants are not barred from asserting the
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`arguments initially raised in their Rule 59(e) motion.
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`Recognizing that the resolution of certain questions of law that have never been considered
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`on the merits might narrow and simplify the trial of this matter, now scheduled to begin November
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`3, 2020, the court granted the parties’ request that they be allowed to file the motions that are now
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`before the court. The defendants’ Motion for Judgment as a Matter of Law asks the court to rule
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`as a matter of law that (1) the statute of limitations cannot operate to bar the defendants’ defenses
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`4 The Sixth Circuit, like this court, declined to reach the issues the defendants had not raised
`until their Rule 59 motion.
`5 The exception to the general remand is that this court also awarded summary judgment
`to the plaintiff as to the authorship of two other compositions. Because the defendants did not
`appeal that portion of this court’s judgment, the Sixth Circuit affirmed that portion of the original
`judgment, which therefore remains in effect. See Everly v. Everly, 958 F.3d 442, 448 n.6 (6th Cir.
`2020) (finding that the defendants had “forfeited any argument” regarding these two compositions
`and affirming summary judgment for the plaintiff on the claims related to them).
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`9
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`to the plaintiff’s affirmative claims, even if it might, arguably, bar the defendants’ Counterclaims;
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`and (2) the proper accrual date for a copyright termination claim is the effective date of
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`termination. (Doc. No. 69.) With regard to the latter claim, the defendants argue that, as “newfound
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`claimants” to the copyright rights accruing after termination, they should be permitted to “proceed
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`without prejudice to what may have occurred during the original term.” (Doc. No. 69, at 2.) The
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`plaintiff has filed a Response in Opposition (Doc. No. 75), and the defendants filed a Reply (Doc.
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`No. 76).
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`The plaintiff, for his part, filed the Motion for Partial Summary Judgment asking the court
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`to rule on Count II of the Complaint and issue a judicial declaration that the 1980 Release is not
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`subject to termination under 17 U.S.C. § 203(a), because it is not a “grant of a transfer or license
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`of copyright or of any right under a copyright.” (See Doc. No. 70.) His supporting memorandum
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`(Doc. No. 71) incorporates by reference the arguments made in the original Memorandum in
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`Support of Summary Judgment (Doc. No. 21) as well as the Statement of Undisputed Material
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`Facts and Response filed by the defendants (Doc. No. 23) in conjunction with their response to the
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`first Motion for Summary Judgment. The defendants filed a Response (Doc. No. 72), a Statement
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`of Additional Disputed Material Facts (Doc. No. 73), and a Supplemental Response to Plaintiff’s
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`Statement of Undisputed Material Facts in Support of His Motion for Partial Summary Judgment
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`(Doc. No. 74), supplementing the defendants’ original responses to two of the statements in the
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`original Statement of Undisputed Material Facts (Doc. No. 23). The plaintiff filed a Reply (Doc.
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`No. 77), a Response to Defendants’ Statement of Additional Disputed Material Facts (Doc. No.
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`78), and Response to Defendants’ Supplemental Response to [Plaintiff’s] Statement of Undisputed
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`Material Facts (Doc. No. 79).
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`III. LEGAL STANDARD
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`The court deems a pretrial motion for judgment as a matter of law as effectively equivalent
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`10
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`to a motion for summary judgment under Rule 56, except that such a motion presumes the absence
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`of material factual disputes and seeks resolution of purely legal issues. Under Rule 56(c),
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`“summary judgment is appropriate when: (1) there is no genuine issue as to any material fact; (2)
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`the moving party is entitled to judgment as a matter of law; and (3) reasonable minds can come to
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`but one conclusion, and that conclusion is adverse to the party against whom the motion for
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`summary judgment is made, who is entitled to have the evidence construed most strongly in his
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`favor.” Mengelkamp v. Lake Metro. Hous. Auth., 549 F. App’x 323, 329 (6th Cir. 2013). Summary
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`judgment will be entered against a party who fails “to establish the existence of an element
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`essential to that party’s case and on which that party bears the burden of proof at trial.” Celotex
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`Corp. v. Catrett, 477 U.S. 317, 322 (1986).
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`While a moving party without the burden of proof need only show that the opponent cannot
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`sustain his burden at trial, Minadeo v. ICI Paints, 398 F.3d 751, 761 (6th Cir. 2005), a moving
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`party with the burden of proof faces a “substantially higher hurdle.” Cockrel v. Shelby Cty. Sch.
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`Dist., 270 F.3d 1036, 1056 (6th Cir. 2001). “Where the moving party has the burden—the plaintiff
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`on a claim for relief or the defendant on an affirmative defense—his showing must be sufficient
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`for the court to hold that no reasonable trier of fact could find other than for the moving party.”
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`Calderone v. United States, 799 F.2d 254, 259 (6th Cir. 1986) (quoting W. Schwarzer, Summary
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`Judgment Under the Federal Rules: Defining Genuine Issues of Material Fact, 99 F.R.D. 465, 487–
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`88 (1984)). Accordingly, summary judgment in favor of the party with the burden of persuasion is
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`not appropriate “when the evidence is susceptible of different interpretations or inferences by the
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`trier of fact.” Hunt v. Cromartie, 526 U.S. 541, 553 (1999).
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`11
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`IV. ANALYSIS
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`A.
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`The Plaintiff’s Motion for Partial Summary Judgment: Whether the 1980
`Release May Be Terminated Under 17 U.SC. § 203(a)
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`
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`Congress amended the Copyright Act in 1976 to create a “termination right”; that is, it
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`authorized the author of a work (or his successors) “to undo a prior transfer of his copyright and
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`recapture all interests in the copyright for himself.” Brumley v. Albert E. Brumley & Sons, Inc.,
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`822 F.3d 926, 928 (6th Cir. 2016). For works transferred on or after January 1, 1978, the author
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`(or his successors, as defined by the statute) could terminate the transfer between thirty-five and
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`forty years after the date the copyright was assigned to a third party. 17 U.S.C. § 203(a)(3). If the
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`work was copyrighted and transferred before 1978, however, the author (or his successors as
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`provided by the Act) could terminate between fifty-six and sixty-one years after the work was
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`copyrighted, or for a period of five years after January 1, 1978, whichever was later. Id. §
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`304(c)(3). See Brumley, 822 F.3d at 928.6
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`These revisions were “expressly intended” to “protect authors against unremunerative
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`transfers.” H.R. Rep. No. 94-1476, at 124 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5740; see
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`Mills Music, Inc. v. Snyder, 469 U.S. 153, 172–73 (1985) (noting that Congress’s intent to “relieve
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`authors of the consequences of ill-advised and unremunerative grants that had been made before
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`the author had a fair opportunity to appreciate the true value of his work product . . . is plainly
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`defined in the legislative history and, indeed, is fairly inferable from the text of § 304 itself”). Both
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`§ 203 and § 304 provide that termination of a prior grant “may be effected notwithstanding any
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`agreement to the contrary, including an agreement to make a will or to make any future grant.” 17
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`6 The Copyright Act was amended in 1998 to increase the length of the copyright term and
`to provide an additional term during which the author may terminate: between seventy-five and
`eighty years after the copyright was obtained. 17 U.S.C. § 304(d)(2). See Brumley, 822 F.3d at
`928–29.
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`12
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`U.S.C. § 203(a)(5); id. § 304(c)(5). Based on this language, the termination rights created by
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`§§ 203 and 304 have repeatedly been characterized as “inalienable.” See, e.g., N.Y. Times Co. v.
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`Tasini, 533 U.S. 483, 497 (2001); Stewart v. Abend, 495 U.S. 207, 230 (1990).
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`
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`As relevant here, Section 203(a) authorizes, under certain conditions, the termination of
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`“the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a
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`copyright, executed by the author on or after January 1, 1978, otherwise than by will.” The ability
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`of the defendants to “terminate” the 1980 Release under this provision, according to its terms,
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`depends on the resolution of two questions. (1) Is Phil Everly an “author” of “Cathy’s Clown”?
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`(2) Does the 1980 Release qualify as a “grant of a transfer or license of copyright or of any right
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`under a copyright”?
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`Irrespective of the answer to the first question, Count 2 of the Complaint seeks a
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`determination that the 1980 Release is not subject to termination under § 203(a) solely because it
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`is not a “grant of a transfer or license of copyright or of any right under a copyright” and, therefore,
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`that the defendants’ 2016 Notice of Termination, purporting to terminate the 1980 Release, is
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`invalid. (Doc. No. 1 ¶ 44.) Don Everly also moves for summary judgment on this issue on the basis
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`that the defendants have “already conceded” that Acuff-Rose “owned 100% of the worldwide
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`copyright and all rights under copyright” in “Cathy’s Clown” in 1980 when Phil Everly executed
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`the Release. (Id.) As a result, the plaintiff claims, Phil had no copyright rights to convey at that
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`time. Instead, Don argues, Phil conveyed only contractual rights to royalties, which are not among
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`the rights under copyright recognized by the Copyright Act, 17 U.S.C. § 106. The plaintiff points
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`out that the defendants, in previous filings, have repeatedly acknowledged that the 1980 Release
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`relates “only to issues of money and public credit—not ownership of the copyright (which had
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`been conveyed to Acuff-Rose as publisher).” (Doc. No. 71, at 5 (quoting Doc. No. 22, at 2, 4, 6).)
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`Case 3:17-cv-01440 Document 80 Filed 09/22/20 Page 12 of 28 PageID #: 1693
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`13
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`
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`In response, the defendants contend that it is the plaintiff who has changed his posture as
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`to this issue, having previously insisted that, by executing the 1980 Release, Phil “surrendered . . .
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`his status as an ‘author’ of [‘Cathy’s Clown’] along with the copyright protections available to
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`authors,” which “nullified Phil’s ability to invoke the termination rights granted to ‘authors’ under
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`17 U.S.C. § 203(a).” (Doc. No. 72, at 1 (quoting Doc. No. 41-1, at 19 (10/6/17 letter from pl.’s
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`counsel to defs.’ counsel)).) The defendants also posit that neither Phil nor Don transferred “all
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`rights under the copyright” in “Cathy’s Clown” to Acuff-Rose, because, as authors, they retained
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`their statutory termination rights, which are “right[s] under copyright.” (Id. at 5 (citing 17 U.S.C.
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`§ 203(a)).)7
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`Otherwise, however, the defendants agree that, because authorship status and termination
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`rights are non-transferable, the 1980 Release conveyed only Phil’s then existing right to receive
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`royalties, “as distinguished from any royalty rights Defendants may acquire upon successful
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`termination of the original grant in the 1960 [Grant] or otherwise.” (Doc. No. 72, at 5.) They argue,
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`however, that because Don has insisted on characterizing the 1980 Release as a “surrender” of
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`Phil’s authorship status and concomitant termination rights, “it was proper for Defendants to serve
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`a termination notice with respect to the 1980 Release and Assignment to protect their rights.” (Id.
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`at 5–6.)
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`In his Reply, the plaintiff reiterates his claim that he is entitled to judgment in his favor on
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`this issue, because it is effectively undisputed, as the defendants’ Response makes clear, that “the
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`only rights that Phil could have transferred to Don in the 1980 Release and Assignment were his
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`then-existing right[s] to receive royalties.” (Doc. No. 77, at 1 (quoting Doc. No. 72, at 5).) The
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`7 Alternatively, they contend that, to the extent the 1980 Release purported to convey
`termination rights, it is unenforceable under 17 U.S.C. § 203(a)(5). (Doc. No. 72, at 5 n.3.)
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`Case 3:17-cv-01440 Document 80 Filed 09/22/20 Page 13 of 28 PageID #: 1694
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`14
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`plaintiff also agrees that authorship status and termination rights are inalienable under the
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`Copyright Act. (Id. at 3.)
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`
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`The law is clear, as both parties concede, that termination rights are non-transferable,
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`“notwithstanding any agreement to the contrary.” See 17 U.S.C. § 203(a)(5); Tasini, 533 U.S. at
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`497. The law is also clear that assignments conveying the right to receive royalties do not “transfer
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`any interest in a copyright or in any of the exclusive rights comprised in a copyright.” Broad.
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`Music, Inc. v. Hirsch, 104 F.3d 1163, 1166 (9th Cir. 1997); accord Wrench LLC v. Taco Bell Corp.,
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`256 F.3d 446, 457 (6th Cir. 2001) (observing that the “remedies available under copyright law do
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`not include damages for the reasonable value of the defendants’ use of the work” and holding that
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`“a state law breach of contract claim based upon a promise to pay for the use of the work is not
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`preempted” by the Copyright Act (citing 1 Nimmer on Copyright § 1.01[B][1][a])); Rodrigue v.
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`Rodrigue, 218 F.3d 432, 439–40 (5th Cir. 2000) (“Notably absent from the Copyright Act’s
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`exclusive sub-bundle of five rights is the right to enjoy the earnings and profits of the copyright.”);
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`Big E. Entm’t, Inc. v. Zomba Enters., Inc, 453 F. Supp. 2d 788, 798 (S.D.N.Y. 2006) (“[A]n
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`agreement concerning royalties does not constitute a ‘transfer of copyright ownership’ within the
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`meaning of [the Copyright Act].” (citation omitted)), aff’d, 259 F. App’x 413 (2d Cir. 2008).
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`Moreover, as the discussion above reflects, the effect of the 1980 Release is apparently
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`undisputed: the Release conveyed, and could only convey, the royalty and credit rights that Phil
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`possessed at the time he executed the Release. Because these are not copyright rights under 17
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`U.S.C. § 106, the plaintiff is entitled to judgment in his favor on Count 2 in the form of a
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`“determination” that the 1980 Release is not a “grant of a transfer . . . of any right under a
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`copyright” and, therefore, does not fall within the scope of, and is not subject to termination
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`pursuant to, § 203(a). As a result, the 2016 Notice of Termination, purporting to terminate the 1980
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`15
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`Release, is invalid. It is entirely unclear, however, what effect—if any—this determination will
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`have on the remainder of the plaintiff’s (or defendants’) claims.
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`B.
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`The Defendants’ Motion: Can the Plaintiff Can Deploy the Statute of
`Limitations to Bar a Defense?
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`1.
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`The Parties’ Positions
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`
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`In their Motion for Judgment as a Matter of Law, the defendants assert, first, that it is a
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`well established general rule that the statute of limitations “cannot be used to cut off the
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`consideration of a defense” and that this general rule applies in the copyright context. (Doc. No.
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`69, at 7.) They also argue that they “asserted Phil’s co-authorship of Cathy’s Clown as a defense
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`to Don’s Complaint seeking a declaration of sole authorship.” (Id. at 8.) They contend that the
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`statute of limitations cannot be used to bar this factual defense, regardless of whether the statute
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`of limitations might be used to bar their affirmative counterclaims. Anticipating that Don will
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`respond that the statute of limitations may bar their defense because they are actually in an
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`“offensive” position, they maintain that only from Don’s perspective could they be deemed the
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`“aggressors” and that, regardless, they are on the defensive side with respect to his affirmative
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`claims. (Id.) They also propose that their Counterclaim “should be construed as a defense to avoid
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`injustice.” (Id. at 10 (citing Fed. R. Civ. P. 8(c)(2)).)
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`
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`In response, the plaintiff indeed argues that the defendants are not merely in a “defensive”
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`posture. Substantively, however, he focuses entirely on the demands for relief in the Counterclaim
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`itself, arguing that the defendants’ claims that depend on authorship are barred by the statute of
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`limitations, regardless of whether they are characterized as “defensive counterclaims.” (Doc. No.
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`75, at 6; see id. at 8 (“Defendants never explain why Don should be penalized for actively pursuing
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`his rights to Cathy’s Clown while they should be allowed to avoid the consequences of Phil’s
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`decades-long inaction by pretending that their counterclaim is anything other than what it is.”).)
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`Case 3:17-cv-014