Italian composer successfully reclaims the copyright to his work in the United States. MORRICONE v. BIXIO

A copyright is a set of exclusive rights granted to the creator of a new artistic expression. When an artist creates a new work of art the artist is automatically granted a copyright to their work. The owner of the copyright has the exclusive right to reproduce, distribute, display, perform, transmit and to prepare derivative works based on the original. If someone other than the copyright owner attempts to exercise one of these rights that can be considered copyright infringement.

Ownership of the copyright is first vested in the creator of the work at the time of creation. The owner may then transfer, or sell, the entire copyright or each of the exclusive rights individually to another person. However, unlike other sales of personal property, an artist has an opportunity to get their property back after a sale. A little known aspect of United States Copyright Law is 17 U.S.C. § 203, Termination of Transfers and Licenses Granted by the Author. This law grants an artist the ability to cancel a copyright transfer thirty five years after the transfer was made. If the artist is deceased, the heirs of the artist are granted the same ability. To exercise this right, an artist must send the current owner of the copyright written notice of the termination and file the notice with the Copyright Office.

The public policy behind this law is that artists, musicians and other creative crafts typically do not enjoy early commercial success. It would be unfair to penalize an artist who, out of desperation or naivety, transferred a copyright early in their career. The Copyright Act of 1790, borrowed the concept from the English Statute of Anne, enacted in 1709, the first copyright law. Successive versions of United States Copyright Acts in 1831, 1870, 1909 and 1976 have included a method for artists to regain their copyrights.

17 U.S.C. § 203 explicitly excludes works for hire. A work for hire is a work prepared by an employee within the scope of his or her employment or a work specially ordered or commissioned for use in one of several categories. A work for hire agreement in the United States requires a written agreement, signed by both parties. While this requirement may seem mundane, failure to adhere to the statute’s requirements will result in a work not being considered a work for hire.

ENNIO MORRICONE MUSIC INC., v. BIXIO MUSIC GROUP LTD., 17-3595-cv (2nd Cir. 2019) is case where the definition of a work for hire allowed an Italian composer to recapture his copyright in the United States even though he could not in his home country.

Plaintiff was commissioned by an affiliate of Defendant to compose six scores for Italian movies in the late 1970s and early 1980s. In exchange for an upfront payment and limited royalties, Plaintiff assigned his rights in the scores to Defendant. In 2017 Plaintiff filed suit for a declaratory judgment terminating the assignment of the copyrights pursuant to the U.S. Copyright Act, 17 U.S.C. § 203. The district court granted summary judgment to the Defendant, concluding that Plaintiff had no right to terminate the assignment because the scores were the Italian equivalent of works made for hire. Plaintiff appealed this judgement to the Court of Appeals for the Second Circuit.

The Second Circuit noted that United States and Italian law allocate authorship status differently. In the United States in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author. Under Italian copyright law the composer of the music is considered a “joint‐author” of the cinematographic work, along with the writer and artistic director, and the composer retains sole authorship in the
score itself. Authors can contract away their economic right to a commissioned work, but they are always considered the authors. This distinction is key because, under § 203, it is the assignment of rights “by the author” that is subject to termination. A second important distinction is that Italian law does not require a writing signed by both parties specifying that a work is made for hire. Because of the difference in authorship and the lack of a writing which met the US statutory requirements, the Second Circuit reversed the district courts decision and remanded the case to be entered in favor the the Plaintiff.

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