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March 4, 1986


The opinion of the court was delivered by: LOWE



 This copyright infringement action involves two of the most popular songs in recent years. The plaintiffs are the composers of the song "Handyman." They seek injunctive relief, actual damages, profits and reasonable attorney's fees and costs for the alleged infringement of the copyright in "Handyman" by marketing of the defendants' song "Karma Chameleon."

 Defendants move for summary judgment. For the reasons stated below, summary judgment is denied.


 The plaintiffs, Jimmy Jones ("Jones") and Otis Blackwell ("Blackwell"), composed the song "Handyman" in 1959. In June of that year, Jones and Blackwell assigned their rights in this work to Shalimar Music Corporation ("Shalimar") and its successors and assigns expressly retaining the right to receive royalties.

 In September of 1959, Shalimar registered "Handyman" and filed sheet music of this revision ("1959 version") with the Copyright Office pursuant to the 1909 Copyright Act ("1959 registration"). Thereafter, Shalimar assigned its interest in the song and through a series of conveyances, the composition and the copyright therein were acquired and are currently owned by CBS Catalogue Partnership, a subsidiary of Catalogue Partnership, a subsidiary of CBS, Inc. Printed sheet music of the 1959 version was published in 1964 by Travis Music Company and in 1977 by United Music Publishing Group.

 In 1960, Jones recorded the song "Handyman" on phonorecords which were sold to the general public by Cub Records. This recorded version ("1960 version") of the song contained additional words and music not found in the 1959 version filed with the Copyright Office. The 1960 version achieved considerably popularity and was later recorded by Del Shannon in 1964 and James Taylor in 1977 with similar success. *fn1"

 The additional words and music included in all three recordings of the 1960 version consisted of an eight measure chorus consisting of the following words:


Come-a, come-a, come-a


Come-a, come-a, come-a


Yeah, Yeah, Yeah


Come-a, come-a, come-a


Come-a, come-a, come-a


They'll come running to me


Yeah, Yeah, Yeah


Yeah, Yeah, Yeah.

 It appears that the 1960 version was never reduced to printed sheet music. *fn2"

 The allegedly infringing song, "Karma Chameleon", was written and recorded by rock personality "Boy George" (George O'Dowd) and the members of his band, Culture Club, in 1983. By February of 1984, "Karma Chameleon" reached number one on the national charts.

 Plaintiffs content that the portion of the chorus which was added to the 1960 version of "Handyman" namely: "come-a, come-a, come-a, come-a" is infringed by the chorus of "Karma Chameleon" which consists of the words:


Karma, Karma, Karma, Karma


Karma, Chameleon.

 Plaintiffs argue that the allegedly infringed portion of the 1960 version is an important part of that work which constitutes the "hook" or "eye-catcher" and suggest that it was in large part responsible for the financial success of the song.

 The 1960 version was not registered with the Copyright Office until August 10, 1984, ("1984 registration") *fn3" when a claim of copyright in the 1960 version was filed in the name of CBS Catalogue Partnership.

 Jones and Blackwell instituted this suit for infringement against Virgin Records, Ltd. and Epic Records (issuers of the phonorecords on which "Karma Chameleon" is recorded), Virgin Music Publishing, Ltd. and Warner Tamerlane Music (purported owners of the copyright in "Karma Chameleon") and CBS Catalogue Partnership (joined as a nominal defendant, see infra, unnumbered n. at 21).

 Defendants Virgin Music Publishing Ltd., Inc. and Virgin Records Ltd. now move for partial summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. In support of their motion, defendants first contend that the plaintiffs have no standing to sue for copyright infringement or alternatively, that they have not sufficiently alleged such standing. Second, defendants assert that the song "Handyman" has entered the public domain since the plaintiffs failed to affix copyright notice to the phonorecords and the song was published without statutory copyright protection. Third, defendants claim that the plaintiffs' 1984 copyright registration of the 1960 version was ineffective. Finally, defendants maintain that the plaintiffs are estopped from alleging infringement. In the alternative, defendants request that should this Court find that the song "Handyman" is in fact protected by copyright, the Court rule that the plaintiffs are not entitled to statutory damages or attorney's fees.

 Despite the obvious difficulty plaintiffs will encounter proving that "Karma Chameleon" infringes the 1960 version of "Handyman," defendants concede that infringement is a question of fact which must be determined by a jury and is not an issue addressable in a Rule 56 proceeding.


 a. Standing to Sue

 As a threshold issue, defendants maintain that the plaintiffs do not have standing to sue since they assigned the legal title to and the copyright in the work. Plaintiffs counter that when they assigned the song to Shalimar and its assigns, they retained a beneficial interest in that work sufficient to maintain this action. *fn4"

 Section 501(b) of the 1976 Copyright Act provides that "[t]he legal or beneficiary owner of an exclusive right under copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b)(1976). A beneficial owner of an exclusive right includes "an author who ha[s] parted with legal title to the copyright in exchange for percentage royalties based on fees or license sales." H.R. Rep. No. 1476, 94th Cong., 2nd Sess. 159 (1976).

 This definition was recently adopted by the Court of Appeals for the Second Circuit in Cortner v. Israel, 732 F.2d 267 (2nd Cir. 1984), rev'g, 568 F. Supp. 1217 (S.D.N.Y. 1983).

 In Cortner, the plaintiffs assigned their composition and all rights therein to ABC in exchange for ABC's obligation to pay royalties. Cortner, 732 F.2d at 269. The Court of Appeals held that the composer's contingent right to receive royalties constituted a sufficient beneficial interest to give them standing to seek relief under both the 1909 and 1976 Copyright Acts. Cortner, 732 F.2d at 271.

 In the instant case, plaintiffs have retained a number of rights in the song including the right to receive royalties based on the sales of the work. *fn5" Accordingly, the plaintiffs have retained a sufficient beneficial interest in the song to have standing to sue for any infringement of the copyright in that work.

 Defendants nevertheless contend that the plaintiffs have not sufficiently alleged or proven the existence of any present beneficial interest. Defendants would argue that the plaintiffs must produce evidence relating to the subsequent chain of ownership which would establish that their interest in the song still exists.

 Admittedly, plaintiffs have not submitted evidence of a present beneficial interest in the song. Plaintiffs have however, attached to their affidavit in opposition to defendants' motion for summary judgment the original contract in which they retained numerous rights in "Handyman". See supra unnumbered n. at 8. This evidence is sufficient to defeat a motion for summary judgment. At this early state in the proceedings, plaintiffs may not be denied the opportunity to provide evidence to support a claim of a present beneficial interest. Brennan v. Paramount Pictures Corp., 209 F. Supp. 150, 152 (S.D.N.Y. 1962). See also Southern Music Pub. Co. v. Walt Disney Prod., 73 F. Supp. 580, 583 (S.D.N.Y. 1947) (attaching assignment contract to complaint is sufficient where it tends to support plaintiff's allegations).

 b. Public Domain

 1. Notice

 Defendants content that the plaintiff's failure to affix a notice of copyright in the song "Handman" to the 1960 phonorecords ceded the work to the public domain. This contention is meritless.

 In White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 S. Ct. 319, 52 L. Ed. 2d 655 (1909), the United States Supreme Court held that a music roll (and by extension a phonorecord) is not a copy within the meaning of the Copyright Act since a copy must be intelligible and in a form which can be seen or read. White-Smith Pub. Co., 209 U.S. at 17. The 1909 Copyright Act implicitly adopted this definition of "copy", 1 Nimmer § 2.03[B] [1] (1985), and did not require that a phonorecord have notice of copyright affixed to it order to protect the underlying musical work thereon. 3 Nimmer § 7.12[B] (1985). *fn6" The failure to affix notice to the phonorecord therefore, did not affect any statutory or common law copyright protection otherwise applicable to the underlying work. *fn7" Buck v. Heretis, 24 F.2d 876 (E.D.S.C. 1928); Buck v. Lester, 24 F.2d 877 (E.D.S.C. 1928). See H.R. Rep. No. 1476, 94th Cong., 2nd Sess. 145 (1976). The current act similarly does not require that notice of copyright in a musical work be affixed to a phonorecord in order to protect the underlying musical work. n** H.R. Rep. N. 1476, 94th Cong., 2nd Sess. 145 (1976); 2 Nimmer § 7.06[B] (1985). Cf. U.S. v. Taxe, 540 F.2d 961, 966 (9th Cir. 1976), cert. denied, 429 U.S. 1124, 51 L. Ed. 2d 575, 97 S. Ct. 1163 (1976).

 Plaintiffs' failure to affix notice of copyright in the song Handyman to the phonorecord on which the song was recorded does not therefore affect any statutory or common law copyright in that work.

 2. Publication under the 1909 Act

 The 1909 Copyright Act preempted most then existing common law and statutory copyright protection. Congress explicitly exempted from such preemption common law copyright in unpublished works. 17 U.S.C. § 2 (1909). This common law copyright attached from the time of a work's creation until the work was published or was registered as a published or unpublished work under the 1909 Act. 1 Nimmer § 4.01[B] (1985). Thus, common law copyright was extinguished upon publication or registration in compliance with the 1909 Act. Roy Export Co. Estab. of Vaduz v. CBS, Inc., 672 F.2d 1095, 1101 (2d Cir. 1982).

 Congress declined to undertake the difficult task of defining publication for the purpose of the 1909 Act, *fn8" leaving that responsibility to the judiciary. The results have not been uniform.

 Publication has been construed as any act by which the copyright owner intentionally makes the musical work available to the public by any means including the sale of phonorecords on which the musical work has been recorded. *fn9" Other cases hold that publication occurs only when the musical work is reduced to a tangible form, such as sheet music, and is distributed to the public. The Court of Appeals for the Second Circuit has adopted and incorporated the latter definition as articulated by then District Judge Gurfein in Rosette v. Rainbo Record Mfg. Corp., 354 F. Supp. 1183 (S.D.N.Y. 1973), aff'd per curiam, 546 F.2d 461 (2d Cir. 1976) (the Second Circuit "affirmed on the opinion of Judge Gurfein.") Noting that the question had been contentiously debated for decades, Judge Gurfein reasoned that since a live performance of a work does not constitute its publication, a recording of that performance, although more permanent in nature, is similarly not a publication. *fn10" Accordingly, Judge Gurfein held that recording and selling phonorecords does not constitute the publication of the previously unpublished musical work contained therein, Rossette, 354 F. Supp. at 1190, 1192, and the common law copyright in such work therefore is not divested. Rossette, 354 F. Supp. at 1193.

 The papers before the Court indicate that the 1960 version of the song "Handyman" was placed before the public only in the form of phonorecords. *fn11" Accordingly, the 1960 version was not published and did not lose its common law copyright protection under the 1909 Act as an unpublished work. *fn12"

 Defendants urge this Court to disregard the Rosette decision but fail to offer any justification for doing so. While we are aware that Rosette is not without its critics and is not followed by a majority of district courts in other circuits, this Court believes that any departure from the established law of this Circuit must be made by the Court of Appeals. *fn13"

 c. Copyright Registration

 Defendants contend that the plaintiffs' 1984 registration if the 1960 version was ineffective since a supplemental registration was employed to add additional words and music to the 1959 registration. *fn14" Thus, defendants contend that the plaintiffs cannot bring suit for the infringement of the 1960 version because it was not registered with the Copyright Office. See 17 U.S.C. § 411(a) (1976). Defendants are correct that a supplemental registration is not appropriate to reflect changes in the content of a work. 37 C.F.R. § 201.5 (b)(2)(iii) (1985). *fn15" Had the plaintiffs filed such a supplement registration, defendants' argument might have some merit and the plaintiffs' suit may have been barred by Section 411(a) of the 1976 Copyright Act. This, however, is not before this Court.

 The pleadings before this Court indicate that in fact no supplemental registration was filed. Rather, the plaintiffs intended to and did register a derivative work claim of copyright in the 1960 version of the song "Handyman". Utilizing application form "PA/PAU," (the form required to obtain a "basic" registration for a musical work), *fn16" plaintiffs properly filed a claim of copyright in the 1960 version. They clearly indicated that the 1960 version was a derivative work of the 1959 version and provided the necessary information to complete such a registration. *fn17"

 Although defendants baldly assert that the 1984 registration was a "supplemental" registration, they fail to present any support for their position. Plaintiffs did nothing to suggest that the registration was intended to be supplemental rather than derivative. For example, plaintiffs did not utilize the applicable form, "CA", to apply for a supplemental registration as required by the Copyright Office Rules and Regulations, 37 C.F.R. § 201.5(c)(2)(1985), nor did they provide information necessary to modify non-substantive information in a previous registration. See 37 C.F.R. 201.5(c)(1)(v)(vi)(1985).

 This Court finds that plaintiffs have registered the 1960 version of the song "Handyman" as a derivative work, effective August 10, 1985. Accordingly, the plaintiffs have complied with the requirements of section 411 of the 1976 Copyright Act and may bring suit for infringement of the properly registered copyright.

 d. Estoppel

 Defendants assert that even if the 1960 version is protected by copyright, the plaintiffs should be estopped form bringing suit. Defendants claim that CBS, Inc., through it's subsidiary CBS Catalogue Partnership, is the current owner of the copyright in the song "Handyman". Defendants contend that since the allegedly infringing song was released by Epic Records, also a purported division of CBS, Inc., plaintiffs should be estopped from alleging infringement in that CBS itself participated in the alleged infringement.

 Defendants have failed to present any evidence that CBS Catalogue Partnership and Epic Records share a corporate identity through CBS, Inc. *fn18" Moreover, defendants have not presented any evidence necessary to support an estoppel defense. *fn19"

 e. Damages

 Defendants request that should the motion for summary judgment be denied, that Court rule that plaintiffs are not entitled to statutory damages or attorneys fees for any infringement occuring before August 10, 1984, the effective date of the plaintiffs' registration of the 1960 version. *fn20"

 The 1976 Copyright Act was intended to preserve the remedies available at common law for the infringement of unpublished works, but was not intended to grant these works the special statutory damages established by the 1976 Act unless the plaintiff had complied with the Act by registering the claim in the copyright. H.R. Rep. No. 1476, 94th Cong., 2nd Sess. 158 (1976). Section 412 of the 1976 Act provides that:


[No] award of statutory damages or of attorney's fees as provided by sections 504 and 505 shall be made for -


(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or


(2) any infringement of copyright commenced after first publication of the work before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

 17 U.S.C. § 412 (1976). *fn21"

 Congress has defined publication for the purposes of the 1976 Copyright Act as the distribution of or offering of distribute copies or phonorecords. *fn22" Under Section 412, publication and registration determine the availability of statutory remedies.

 If the 1960 version remained unpublished and unregistered after the effective date of the 1976 Act (January 1, 1978), no statutory damages or attorney's fees are available. If the 1960 version was later registered and remained unpublished, statutory remedies are available only for infringement occuring after the effective date of registration.

 If the 1960 version was published (distributed or offered for distribution) after the effective date of the 1976 Act and the work was unregistered, no statutory damages or attorney's fees are available. However, if the 1960 version was registered within three months of the first publication after the effective date of the Act (January 1, 1978), then statutory damages and attorney's fees are available for infringement occuring after the first publication.

 The parties concede that the 1960 version was not registered until August 10, 1984. However, defendants have not alleged that the 1960 version was distributed or offered for distribution after January 1, 1978. Accordingly, defendants' request for a ruling limiting plaintiffs' remedies must be denied at this time.


 For the reasons set forth above, defendants' motion for summary judgment is denied. Defendants' request for a ruling limiting the remedies available to plaintiffs is denied. The parties are to submit a joint pretrial order within thirty days.

 It is So Ordered

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