IP Law Daily Six Morricone scores were ‘commissioned’ works; assignments to publisher not cancellable
Tuesday, October 10, 2017

Six Morricone scores were ‘commissioned’ works; assignments to publisher not cancellable

By Mark Engstrom, J.D.

Film composer Ennio Morricone was not entitled to a declaratory judgment that his music company—Ennio Morricone Music Inc.—was the sole owner of copyrights to six Italian film scores, the federal district court in New York City has ruled. Because the scores were commissioned works that constituted works for hire, Morricone Music could not terminate its copyright assignments to Bixio Music Group under 17 U.S.C. §203. Summary judgment in favor of Bixio was granted (Ennio Morricone Music Inc. v. Bixio Music Group Ltd., October 6, 2017, Forrest, K.).

Bixio Music acted as a middleman between Ennio Morricone and third-party filmmakers. Each agreement between Bixio and Morricone assigned Morricone’s copyright in the film score he produced to the music publisher so the publisher could license the score to the producer of the film. The agreements at issue transferred to Bixio "all the rights of economic use, in any country in the world, with regard to the works."

In 2012, Morricone Music served Bixio Music Group with a notice that purportedly terminated, under 17 U.S.C. §203, the copyright assignments to Bixio. The parties agreed that the principal question before the court was whether the exception in §203, which prohibits the termination of a copyright assignment by an author when the work was "made for hire," applied to the six scores at issue.

To answer that question, the court had to decide whether the scores were works for hire under Italian law. The court concluded that the scores were "commissioned works" under Italian law. Because the legal effect of that conclusion was "the same as the American equivalent of work for hire," the purported termination of the copyright assignment to Bixio had no legal effect.

First, the initial contracts between Bixio and the film producers conferred ownership of the scores and the role of music producer on Bixio, according to the court. The contracts required Bixio to "produce the musical soundtrack," and they stated that the soundtrack would be Bixio’s "absolute property in all Countries of the world with all exploitation rights of any kind whatsoever."

Second, the contracts between Morricone and Bixio were commissions for scores to existing films. The court noted that Bixio retained the exclusive right to "use the works to produce the recordings thereof." In addition, the contracts required Morricone to meet deadlines that were set by the film producer.

Third, Morricone’s contracts provided "procedures and time-limits" for producing the scores, and they explicitly required Morricone to "grant and transfer to [Bixio], exclusively, for the maximum total duration permitted by the laws in force in each country in the world, … all the rights of economic use, in any country in the world, with regard to the works."

Fourth, the contracts implicitly reserved the right of Bixio and the film producers to reject the scores that Morricone created, without incurring further liability. According to the court, the contracts stated that Morricone Music would receive, as consideration, three million Italian Lira, film credits, and a percentage of the amounts that were received from the future economic use of the works at issue. Ostensibly, Morricone would receive three million Lira even if Bixio and the producers did not use his compositions.

The court noted that Italian copyright laws typically granted an original copyright to the creator of a work. They did not, however, prevent the assignment of the creator’s copyrights, and in this case, an assignment had occurred under each agreement between Morricone and Bixio. Significantly, Morricone did not substantiate his assertion that a score could not be a "work for hire," and Article 2222 of the Italian Civil Code covered that type of agreement as an "independent labour contract" under which "one of the parties undertakes to render to … the other party (against payment of a consideration) a service or work (not yet existing)," according to Bixio.

The court acknowledged that, under Italian copyright law, certain moral rights always remained with the work’s creator, even after ownership has been transferred. However, economic exploitation rights—the only rights at issue in this case—were not moral rights. In addition, Morricone’s six scores clearly qualified as "commissioned" works that functioned as "works for hire." Significantly, the scores were produced under contracts with a music publisher and were intended as soundtracks for films that had already been created. Moreover, Bixio had acquired exclusive rights to the works under its contracts with Morricone.

For those reasons, the court found that the six Morricone scores were each produced under contracts with a music publisher, that the scores were intended to be soundtracks for films that had already been created, and that Bixio had acquired exclusive rights to the scores under its contracts with Morricone.

The case is No. 16-cv-8475 (KBF).

Attorneys: Timothy M. O’Donnell (Timothy M. O’Donnell, Attorney at law) for Ennio Morricone Music Inc. Barry Isaac Slotnick (Loeb & Loeb LLP) for Bixio Music Group Ltd.

Companies: Ennio Moricone Music Inc.; Bixio Music Group Ltd.

MainStory: TopStory Copyright NewYorkNews

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