Mills Music, Inc. v. Snyder

Justice White, with whom Justice Brennan, Justice Marshall, and Justice Blackmun join,

dissenting.

I can accept the assertion that the “terminated grant” referred to in § 304(c)(6)(A) is the original grant from Snyder to Mills. I also have no trouble with the notion that the derivative works at issue in this case were prepared “under authority of the grant,” in that the Snyder-Mills grant endowed Mills, as owner of the copyright, with the authority to license the preparation of sound recordings of the Song. And it is merely an obvious rephrasing of the statutory language to say that users of these derivative works may continue to utilize them under the specific terms of the licenses issued by Mills. But these observations provide no basis for construing the statute so as to extend the benefits of the Exception to Mills, as well as to users of derivative works, after the Snyders have terminated the original grant and reclaimed ownership of the copyright.

I

The right to terminate defined in § 304(c) encompasses not only termination of the grant of copyright itself, but also termination of the grant of “any right under” that copyright. Subsection (6) of this provision reiterates this point, stating that “all of a particular author’s rights under this title that were covered by the terminated grant revert, upon the effective date of termination,” to the author or his heirs. A *179straightforward reading of this language is that it allows the author or his heirs to reclaim the copyright he formerly bargained away, as well as any other right granted under the copyright. Surely this termination right extends to recapturing the right previously given to the grantee, in this case Mills, to share in royalties paid by licensees.

The author’s right to displace the grantee under § 304(c)(6) appears complete, subject only to the enumerated exceptions. One of these, Exception (A), accords the utilizer of a derivative work the privilege of continuing to utilize the work under the terms of the grant. In this case, only the recording companies — not Mills — can exercise the right to utilize the derivative works.1 To protect that utilization, it is necessary only to insulate utilizers from the author’s right to terminate the license of the underlying work and to renegotiate a higher royalty. The utilizers’ sole interest is in maintaining the royalty rate that prevailed before the author’s termination of the grant; the identity of the party who receives that royalty is a matter of indifference to them. In this case, the utilizers, Mills’ licensees, were not parties to the agreement between Mills and Snyder. They were contractually obligated to pay royalties to Mills, but were not involved in any division of royalties beyond that point. It is strange, to say the least, to hold, as the Court does today, that the terms of utilization by the licensee include the agreement between Mills and Snyder to divide royalties, an agreement that is entirely irrelevant to protecting utilization of the derivative work.

The majority attempts to resolve the tension between the three uses of the word “grant” in § 304(c)(6)(A) by reading the word to encompass both the Snyder-Mills grant and Mills’ *180subsequent licenses to the record companies. But while this interpretation may stretch the language of the Exception to fit the situation at hand, it does not explain why the Exception should preserve the royalty-division agreement between Mills and Snyder. Even assuming that there is only one grant, and that it includes the licenses issued by Mills, the only terms of the grant preserved by the Exception are those terms under which the derivative grant is utilized. The relevant terms, therefore, are those governing the licensees’ obligation to pay a certain royalty rate, not those governing the division of royalties between Mills and the Snyders.

The majority claims that it is essential to read the Exception as preserving Mills’ rights because the terms under which the derivative works are utilized identify Mills, or Fox, as Mills’ agent, as the recipient of the royalties. It is surely true that the licenses say this, but that is a surprisingly weak reed on which to rest a judgment of this Court. It can mean only that, if the utilizer of the derivative work wishes to continue to pay royalties to Fox, he may do so. Fox, after collecting the royalties and deducting its fee, will be obligated to forward the royalties to the rightful owners of the copyright, the Snyders.2

II

The majority’s reading of the statute, as awkward and clumsy as it is, might conceivably be accepted if it were supported by the legislative history. But it plainly is not. The legislative history of the Exception is scanty, and it contains *181no express consideration of the multiple-grant situation that confronts us in this case. Rather, Congress confined its attention to the situation involving a grant from the copyright owner to the creator of an independently copyrightable derivative work. A 1967 House of Representatives Report, for example, discussing an earlier version of the 1976 Copyright Act, stated that “any grantee who has made a derivative work under his grant” might continue to use the work after termination of the grant.3 The Committee apparently assumed that the grantee of the underlying copyright and the utilizer of the derivative work would be one and the same.

The majority places great emphasis on indications that Congress was aware of multiparty arrangements in the movie and music-publishing industries, positing from this awareness an intention to extend the benefits of the Exception to middlemen such as Mills. But the majority cites not one word to indicate that Congress did in fact contemplate such a result when it enacted the Exception. On the contrary, when the Exception was being drafted by the Copyright Office, the hypotheticals offered to illustrate its operation were cast in terms of the motion picture industry and assumed that the creator of the underlying work, a story or novel, would deal directly with the creator of the derivative work, a film.4 If, as the majority asserts, Congress did consider the application of the Exception to the multiple-grant situation, it is indeed odd that it phrased the statutory language so ambiguously.

*182That middlemen such as music publishers were to be excluded from the benefits conferred by the Exception is strongly supported by statements to that effect by music publishers themselves, made in the discussions that took place before the Copyright Office. When a version of the Exception first appeared in the 1964 preliminary draft bill, representatives of the music publishing industry protested. A representative of the Music Publishers Association of the United States stated that under the proposed exception, “the royalties resulting from the license presumably rever[t] entirely to the author.”5 A spokesman for the Music Publishers Protective Association construed the Exception as being “for the benefit of everyone acquiring rights under a copyright other than the publisher.”6

*183The legislative history thus lends no support for Mills’ claimed right to share in the royalties from derivative works. Rather, it clearly evidences the underlying purpose of the Exception, which is, as the majority concedes, to protect the actual owners of derivative works, such as film producers, from having to renegotiate rights in underlying works, such as the novels or plays on which the films were based. When the Exception was formulated, and indeed when it was enacted, the prevailing understanding of the 1909 Act was that the owners of renewal rights in a copyrighted work might exercise a veto power over continued performance of a derivative work that had been created under a first-term grant.7 Motion picture studios, fearing infringement actions by authors’ statutory successors or their assignees, removed from circulation several highly successful films.8 The Exception *184was drafted in response to protests from commentators and movie producers whose goal was to allow the continued distribution of movies despite termination of the grant in the underlying play or novel.9 Barbara Ringer, then Assistant Register of Copyrights, described an early version of the Exception as being designed to “permit the owner of a derivative work, such as a motion picture, to continue using it.”10 The House Report on the 1976 Act also offered this explanation in elucidating the Exception: “In other words, a film made from a play could continue to be licensed for performance after the motion picture contract had been terminated but any remake rights covered by the contract would be cut off.”11

To carry out this purpose of protecting derivative users, it is unnecessary to protect middlemen as well, and there is no indication whatsoever that Congress intended to do so. The majority, however, unaccountably rejects the position that *185the Exception should be construed only so broadly as is necessary to effectuate this undisputed legislative intent.12 It also ignores the accepted principle of statutory construction that an ambiguous statute should be construed in light of the statutory purpose.13 As the majority acknowledges, the principal purpose of the extension of the term of copyright and the concomitant termination provisions — to which the derivative-works clause forms an exception — was to benefit authors. Under the 1909 Copyright Act, copyright subsisted in two 28-year terms, with renewal available to the author at the end of the first term. This right of renewal was intended to allow an author who had underestimated the value of his creation at the outset to reap some of the rewards of its eventual success.14 That purpose, however, was substantially thwarted by this Court’s decision in Fred Fisher Music Co. v. M. Witmark & Sons, 318 U. S. 643 (1943). As a result of that decision, an author might assign, not only the initial term of the copyright in his work, but also the renewal *186term. Thus, assignees were able to demand the assignment of both terms at the time when the value of the copyrighted work was most uncertain.

The termination provisions of the 1976 Act were designed to correct this situation. They guarantee to an author or his heirs the right to terminate a grant and any right under it “notwithstanding any agreement to the contrary.”15 The House Report accompanying the Act explained that “[a] provision of this sort is needed because of the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.”16 The termination provisions, therefore, clearly favor authors’ interests over those of grantees such as music publishers.17

The derivative-works clause reflects an accommodation between two competing concerns: that of providing compensation to authors, and that of promoting public access to derivative works. The majority apparently concludes that its interpretation of the Exception does justice to both of these concerns. But to promote public access to existing derivative works, it is necessary to go no further than to allow the owners of these works to continue to disseminate them. The rights of middlemen to receive royalties under terminated grants do not enter into the balance; regardless of *187who receives the royalties, the owner of the derivative work may continue to pay the same rate, and public access to the work will be unimpeded.

By going further than necessary to effect the goal of promoting access to the arts, the majority frustrates the congressional purpose of compensating authors who, when their works were in their infancy, struck unremunerative bargains. That such frustration will result is clearest in the situation, not uncommon in the music industry, where an author has assigned his rights for a one-time, lump-sum payment.18 Under the majority’s interpretation of the Exception, the publisher-middleman would be free to continue to collect all royalties accruing during the extended 19-year copyright term, and the author would receive nothing. While my interpretation of the Exception results in the author’s receiving more than he would have received under the terminated grant, such a result is the very objective of the termination provisions.

To allow authors to recover the full amount of derivative-works royalties under the Exception is not to slight the role of middlemen such as music publishers in promoting public access to the arts. Achieving that fundamental objective of the copyright laws requires providing incentives both to the creation of works of art and to their dissemination.19 But the need to provide incentives is inapposite to the circumstances of this case, because the rights at issue are attached to a term of copyright that extends beyond what was contemplated by the parties at the time of the initial grant. In 1940, when Ted Snyder and Mills entered into their royalty-division *188agreement, neither party could have acted in reliance on the royalties to be derived from the additional 19-year term created by the 1976 Act. In this situation, the author and the grantee have each already reaped the benefit of their bargain, and the only question is which one should receive the windfall conferred by Congress. The considerations that should govern the allocation of a windfall are not those of providing incentives but those of providing compensation. And the legislative history of the renewal and termination provisions indicates a congressional purpose to compensate authors, not their grantees. In attempting to claim for itself the benefits of the derivative-works exception, Mills bears the burden of proof.20 In my view, it has fallen far short of carrying that burden.

As the Court of Appeals observed, if Mills did attempt to utilize any of the derivative works, for example by selling copies of the phonorecords of the copyrighted work to the public, it would be infringing on the derivative copyrights. Harry Fox Agency, Inc. v. Mills Music, Inc., 720 F. 2d 733, 739 (CA2 1983).

The majority finds perpetuation of the royalty-division agreement essential to the Snyders’ right to collect derivative-works royalties, because, according to the majority, absent that agreement the Snyders have no contractual or statutory right to receive them. This argument assumes that the Exception deprives the Snyders of the right to receive royalties, a right that they would otherwise reclaim by virtue of the termination provisions of § 304(c). But the Exception deprives the Snyders only of the right to change the rate of royalties, not of the right to receive them. See supra, at 179 and this page..

H. R. Rep. No. 83, 90th Cong., 1st Sess., 9 (1967) (discussing right of first negotiation granted to current holder of derivative rights under then-current proposal) (emphasis added).

See Discussion and Comments on Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 88th Cong., 1st Sess., Copyright Law Revision, Part 2, p. 361 (H. Judiciary Comm. Print 1963) (Statement of Motion Picture Association of America); Supplementary Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess., Copyright Law Revision, Part 6, p. 76 (H. Judiciary Comm. Print 1965).

Preliminary Draft for Revised U. S. Copyright Law and Discussions and Comments on the Draft, 88th Cong., 2d Sess., Copyright Law Revision, Part 3, pp. 284-285 (H. Judiciary Comm. Print 1964) (statement of Phillip Wattenberg). See also id,., at 296-297 (termination clause, including exception, would give author 100% of royalties) (statement of Mr. Kaminstein).

Id., at 318-319 (written submission of Julian Abeles). These statements were, of course, made by interested parties. But this Court has recognized that, where, as here, legislation is the result of compromise between competing interests, see H. R. Rep. No. 83, supra, at 90, statements by interested parties carry some weight. See Dawson Chemical Co. v. Rohm & Haas Co., 448 U. S. 176, 202-212 (1980); Chicago & N. W. R. Co. v. Transportation Union, 402 U. S. 570, 576 (1971). In those cases, the testimony was given before Congress itself, whereas the music publishers’ statements were made to the Copyright Office. But the Copyright Act is unusual in that much of it, including the derivative-works Exception, was drafted by the Copyright Office, which is itself an arm of Congress. The House and Senate Committees were clearly aware of the history of the termination provisions in the Copyright Office. See H. R. Rep. No. 83, supra, at 90; Hearings on S. 1006 before the Subcommittee on Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, 89th Cong., 1st Sess., 64 (1965). Especially in the absence of any other legislative history directly relevant to the treatment of music publishers under the Exception, the statements before the Copyright Office cannot be ignored.

This was the “broad interpretation” of G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F. 2d 469 (CA2), cert. denied, 342 U. S. 849 (1951). Ricordi merely held that the licensee of a copyright holder may not prepare a new derivative work based upon the copyrighted work after termination of the grant. Some courts and commentators, however, extracted from Ricordi a rule that even continued utilization of a previously created derivative work must cease after termination of the grant in the underlying work. See Brieker, Renewal and Extension of Copyright, 29 S. Cal. L. Rev. 23, 43 (1955); Melniker & Melniker, Termination of Transfers and Licenses Under the New Copyright Law, 22 N. Y. L. S. L. Rev. 589, 612, n. 117 (1977). Barbara Ringer, former Register of Copyrights, endorsed this view in a study prepared for Congress in connection with the drafting of the 1976 Act. B. Ringer, Renewal of Copyright, 86th Cong., 2d Sess., Copyright Law Revision, Studies Prepared for the Subcommittee on Patents, Trademarks, and Copyrights of the Senate Committee on the Judiciary, Study No. 31, p. 169 (Comm. Print 1961). A narrower interpretation eventually prevailed, but not until after passage of the 1976 Act. See Rohauer v. Killiam Shows, Inc., 551 F. 2d 484 (CA2), cert. denied, 431 U. S. 949 (1977).

These included “Thanks for the Memory,” “You Can’t Take It With You,” and “The Man Who Came to Dinner.” Others, like “Gone With the Wind,” remained in circulation only because producers were willing to pay substantial sums to holders of copyrights in the underlying works. See Jaszi, When Works Collide: Derivative Motion Pictures, Underlying *184Rights, and the Public Interest, 28 UCLA L. Rev. 715, 740 (1981). If an author had assigned his rights in the renewal term at the time that he assigned rights in the initial term, a grantee might safely release a derivative work prepared under authority of the first-term grant. But if the author had died before his renewal rights vested, his statutory successors acquired those rights, and any previous assignment was rendered null. See Miller Music Corp. v. Charles N. Daniels, Inc., 362 U. S. 373 (1960). Movies based on plays or novels were therefore taken out of circulation when authors had died before their renewal rights had vested, and statutory successors or their assignees had renewed the copyright in the underlying work. Note, Derivative Copyright and the 1909 Act — New Clarity or Confusion?, 44 Brooklyn L. Rev. 905, 928, n. 125 (1978).

See Discussion and Comments on Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, supra n. 4, at 361 (submission of Motion Picture Association of America); id., at 265 (statement of Seymour Bricker); Preliminary Draft for Revised U. S. Copyright Law and Discussions and Comments on the Draft, supra n. 5, at 16, § 16(b) Alternative A; id., at 21, § 22(c)(3) (insertion of derivative-works exception for new and existing copyrights in 1964 Preliminary Draft).

Id., at 278.

H. R. Rep. No. 94-1476, p. 127 (1976) (discussing 17 U. S. C. § 203(b), the analogue to § 304 for new copyrights).

The majority’s thesis ignores the principle that “where there is doubt about how inclusively a statute should be construed to apply, if the mischief that it was enacted to remedy can be perceived it will be construed to apply only so far as is needed in order to effectuate the remedy.” 2A C. Sands, Sutherland on Statutory Construction §54.04, p. 358 (4th ed. 1973).

As construed by the majority, the derivative-works Exception also creates a statutory inconsistency with the compulsory license mechanism established under 17 U. S. C. § 115. Section 115 allows record producers to make and sell sound recordings without permission from the copyright owner, provided that they pay a statutory royalty. This royalty is payable to the current owner of the copyright. § 115(c)(1). In this case, as all agree, the current owners of the copyright are the Snyders.

See Sony Corp. v. Universal City Studios, Inc., 464 U. S. 417, 431-432 (1984); see also United States v. Bacto-Unidisk, 394 U. S. 784, 799 (1969) (“[Wjhere the statute’s language seem[s] insufficiently precise, the ‘natural way’ to draw the line ‘is in light of the statutory purpose’ ”) (quoting SEC v. Ralston Purina Co., 346 U. S. 119, 124-125 (1953)).

See Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., Copyright Law Revision, 53 (H. Judiciary Comm. Print 1961).

17 U. S. C. § 203(a)(5) (grants executed on or after effective date of Act); § 304(c)(5) (grants executed before effective date of Act). In place of the renewal-term system of the 1909 Act, the 1976 Act substitutes a single term enduring for the life of the author plus 50 years. § 302(a). In the case of subsisting copyrights, the Act extended the term of copyright from 56 years to 75. §§ 304 (a),(b).

H. R. Rep. No. 94-1476, at 124.

Barbara Ringer, former Register of Copyrights and the person who was most instrumental in the drafting of the 1976 Act, see 1 M. Nimmer, The Law of Copyright, Preface to the 1978 Comprehensive Treatise Revision vi, has written that the Act as a whole, including the termination provisions, “mark[s] a break with a two-hundred-year-old tradition that has identified copyright more closely with the publisher than with the author.” Ringer, First Thoughts on the Copyright Act of 1976, 22 N. Y. L. S. L. Rev. 477, 490-493 (1977).

These lump-sum transfers were a major target of the Act’s termination provisions. See Report of the Register of Copyrights on the General Revision of the U. S. Copyright Law, 87th Cong., 1st Sess., Copyright Law Revision, 58 (H. Judiciary Comm. Print 1961) (proposing that rights revert to author only when author “would otherwise receive no benefit from the lengthened term,” as a result of lump-sum transfer).

See Twentieth Century Music Corp. v. Aiken, 422 U. S. 151, 156 (1975).

Under general principles of statutory construction, “[o]ne who claims the benefit of an exception from the prohibition of a statute has the burden of proving that his claim comes within the exception.” 2A C. Sands, Sutherland on Statutory Construction §47.11, p. 90 (4th ed. 1973); see United States v. First City National Bank of Houston, 386 U. S. 361, 366 (1967).