United States District Court, Southern District of New York
November 8, 1990
LARRY SPIER, INC., PLAINTIFF,
BOURNE CO., DEFENDANT.
The opinion of the court was delivered by: Haight, District Judge:
MEMORANDUM OPINION AND ORDER
In this action under the Copyright Act between two music
publishers, plaintiff seeks a declaration that defendant's
rights in certain songs have been terminated and an
accounting. Defendant moves under Rule 56, Fed.R.Civ.P., for
summary judgment dismissing the complaint.
Plaintiff Larry Spier, Inc. ("Spier") and defendant Bourne
Co. ("Bourne") are music publishers.
The late Dave Dreyer was a composer of popular songs. During
the period 1925 through 1931, Dreyer, in collaboration with
such legendary figures as A1 Jolson and Billy Rose,
co-authored five songs: "Me and My Shadow", "Wabash Moon,"
"There's a Rainbow Round My Shoulder," "Back In Your Own
Backyard," and "Cecilia." Shortly after their composition,
Dreyer assigned his copyrights to the songs to Bourne's
predecessor in interest, Irving Berlin, Inc. Those assignments
the initial term of the copyrights. In 1951 Dreyer assigned
the renewal terms of the copyrights to Bourne.
On January 5, 1965 Dreyer executed his last will and
testament, adding a first codicil on March 8, 1965. Dreyer
died on March 2, 1967.
After making certain specific bequests, Dreyer's will
provided as follows:
THIRD: I anticipate that among the assets of my
estate will be copyrights, renewal copyrights and
extensions thereof, and publishing contracts with
respect to musical compositions written by me,
and the rights deriving from my membership, as a
writer, in the American Society of Authors,
Composers and Publishers (ASCAP), in accordance
with its rules. All of such property will
hereinafter be referred to collectively, for
convenience, as my "music assets".
The Fifth Article of Dreyer's will placed those "music
assets" into a testamentary trust. The will provided:
FIFTH: All of my assets other than those which
shall have been set apart as principal of Trust
"A", and after ANNA's death those music assets
which theretofore had constituted a part of Trust
"A", I give and bequeath to my Trustee to hold,
manage, invest and reinvest the same, and to
collect the income therefrom, upon the following
uses and purposes: . . .
Dreyer was survived by his widow Anna Dreyer, his son Lewis
Dreyer, and his daughter Marie Dreyer Rothblum. The will was
probated, the trust came into being, and trustees were
appointed. Under the will Anna Dreyer received a certain
portion of the net income from copyright and renewal rights,
with remaining income divided between Dreyer's son Lewis, his
daughter Marie Dreyer Rothblum, and Mynna Granat, his
mistress. Upon the death of Anna Dreyer, all the net income
from copyright and renewal rights was to be distributed
equally between Mynna Granat, Marie Dreyer Rothblum and Lewis
Dreyer. The will provided that the trust would survive at
least until the death of two of these named beneficiaries.
In 1972, prior to expiration of the initial and renewal
terms of the copyrights to the songs in question, Lewis Dreyer
died, leaving his wife Beth and two sons Steven D. Dreyer and
Dean Dreyer. In 1984 Anna Dreyer died intestate. In 1989 Dean
Dreyer died intestate.
In accordance with Dreyer's will, the American Society of
Composers, Authors and Publishers ("ASCAP") and the
Song-writers Guild are distributing royalties in respect of
Dreyer's compositions. The present schedule of distribution
is: one-third to Mynna Granat, one-third to Marie Dreyer
Rothblum, one-sixth to Steven D. Dreyer and one-sixth for the
benefit of Dean Dreyer's son.
In April 1981, Anna Dreyer, Marie Dreyer Rothblum, Steven D.
Dreyer, and Dean Dreyer executed and mailed to Bourne notices
of termination, purportedly pursuant to the Copyright Act,
17 U.S.C. § 304(c) and 37 C.F.R. § 201.10, seeking to terminate
Bourne's rights to the songs in question. In 1988 Steven D.
Dreyer and Dean Dreyer executed assignments of their rights to
the songs to Spier. It appears from plaintiff's amended
complaint that in May 1990, in apparent response to defendant's
present motion, Marie Dreyer Rothblum assigned her rights in
the songs to Spier. Mynna Granat has not joined in any
assignment to Spier.
On these undisputed facts, Bourne moves for summary judgment
dismissing the complaint on two grounds. First, it is said
that Spier's assignors possessed no right of termination of
copyright because Dave Dreyer, the author, had transferred all
of his copyright interests by will. In the alternative, Bourne
argues that assuming there was a right of termination, the
purported assignments are invalid because not executed by the
number and proportion of persons required by § 304(c)(6)(C).
Spier sues as assignee of copyright infringements in the
Dreyer songs. Its suit alleges that Bourne's copyright
in those songs were terminated by Dreyer's heirs, who
thereafter assigned the interests to Spier. Bourne contends on
this motion that the Dreyer heirs possessed no right of
termination and that Bourne's rights in the copyrights were
unaffected by the notices of termination. The case turns upon
the proper construction of section 304(c) of the Copyright Act
of 1976, 17 U.S.C. § 304(c).
Before turning to that section, it is appropriate to observe
that the Copyright Act expressly provides that "[t]he
ownership of a copyright . . . may be bequeathed by will . .
." 17 U.S.C. § 201(d)(1). Dave Dreyer acted pursuant to that
statutory authority when he executed a will creating a
testamentary trust of which his musical assets became the
corpus. Those musical assets include, "copyrights, renewal
copyrights and extensions thereof, and publishing contracts
with respect to musical compositions written by me . . ." The
trust came into being upon Dreyer's death in 1967 and the
admission of his will to probate.
Section 304 of the Copyright Act of 1976 deals with duration
of copyright. § 304(a) provides:
Any copyright, the first term of which is
subsisting on January 1, 1978, shall endure for
twenty-eight years from the date it was
originally secured: . . .
A second proviso to 17 U.S.C. § 304(a) provides that:
the author of such work, if still living, or the
widow, widower, or children of the author, if the
author be not living, or if such author, widow,
widower, or children be not living, then the
author's executors, or in the absence of a will,
his or her next of kin shall be entitled to a
renewal and extension of the copyright in such
work for a further term of forty-seven years . ..
§ 304(c) begins with this language:
Termination of Transfers and Licenses Covering
Extended Renewal Term. — In the case of any
copyright subsisting in either its first or renewal
term January 1, 1978, other than a copyright in a
work made for hire, the exclusive or nonexclusive
grant of a transfer or license of the renewal
copyright or any right under it, executed before
January 1, 1978, by any of the persons designated
by the second proviso of subsection (a) of this
section, otherwise than by will, is subject to
termination under the following conditions:
There then follows elaborate statutory provisions with
respect to who may effect a termination of the grant if the
author is dead, and in what manner. I need not quote them. It
is sufficient for present purposes to say that the statutory
termination right devolves upon the author's widow or widower,
children, and children of those children. Plaintiff's
assignors purported to act under those provisions in
terminating defendant's copyright interest in the Dreyer
§ 304(c) covers "the exclusive or non-exclusive grant of a
transfer or license of renewal copyright or any right under it,
executed before January 1, 1978 . . . otherwise than by will .
. ." (emphasis added).
Bourne argues that when § 201(d)(1)'s authorization of the
bequeathing of the ownership of the copyright by will is read
in conjunction with § 304(c)'s provisions for termination of
transfers "otherwise than by will," the plain language of the
statute exempts from § 304(c) termination those "copyrights,
renewal copyrights and extensions thereof and publishing
contracts" which form the corpus of Dave Dreyer's testamentary
Spier argues that the "otherwise than by will" phrase in
§ 304(c) refers to only a grant of copyright renewals made by
will. Since Dreyer assigned the renewal terms of the copyrights
to Bourne by separate contract prior to his death, and not in
his will, Spier argues that his heirs may invoke the
termination procedures of § 304(c).
Both statutory constructions are arguable. Neither the
Supreme Court nor the Second Circuit appear to have squarely
addressed the issue.*fn1 I may therefore consider
the legislative history. The House Report on the Copyright Act
said of section 304(c):
the right of termination would be confined to
inter vivos transfers or licenses executed by the
author, and would not apply to . . . the author's
own bequests. H.Rep. No. 94-1476 (94th Cong., 2d
Sess. 125), U.S.Code Cong. & Admin.News 1976, p.
Thus Bourne's statutory construction appears more consistent
with the congressional intent underlying the provision for
termination. Surely, in the case at bar, Bourne's construction
is more consistent with the intent of the late Dave Dreyer.
The terminations attempted by Dreyer's natural heirs would, if
effective, entirely cut off Mynna Granat, Dreyer's former
mistress, as a beneficiary of the testamentary trust in
respect of these five songs. Bourne argues that such a result
would contravene § 304(c)(6)(D), which provides that the
termination of a grant under § 304(c) "in no way affects rights
arising under other Federal, State, or foreign laws"; Bourne
makes reference to the New York Estates Powers and Trust Law,
under which Dreyer's will and trust are administered. I think
the argument stretches § 304(c)(6)(D) too far, and Bourne cites
no cases in support of it. But I decline to adopt a
construction of the Copyright Act which would thwart an
author's intentions expressed in a will, particularly where
Congress made plain its legislative intention to authorize the
transfer of copyright interests by bequests in wills, and, in
the particular context of termination, to protect the author's
I attach significance to the breadth of Dave Dreyer's
testamentary trust. The "music assets" constituting the trust
corpus consist not only of "copyrights" and "renewal
copyrights," but "publishing contracts" as well. The renewal
copyrights assigned by Dreyer to Bourne in 1951, which
obligated Bourne to pay Dreyer royalties, constitute
"publishing contracts" within the contemplation of the will
and trust. To avoid summary judgment, Spier must show that the
proper construction of § 304(c) authorizes the destruction of
contracts an author bequeathed into trust by his will, and the
disenfranchising of a trust beneficiary (here Mynna Granat) for
whom the author sought to make provisions.
I decline to place that construction upon the statute.
Instead, I conclude that the provisions of Dave Dreyer's will
operated to exempt the copyrights, renewal copyrights, and
publishing contracts from the scope of § 304(c). It follows
that Dreyer's natural heirs had no power to terminate the
several copyrights of these songs, and their purported
assignments to Spier are nullities. Bourne is entitled to
If I am wrong in that conclusion, Bourne's motion for
summary judgment fails because there is no merit to its
When Bourne filed its motion, only Steven D. Dreyer and Dean
Dreyer, sons of Lewis Dreyer and grandsons of Dave Dreyer, had
signed an assignment to Spier. They signed that assignment in
May 1988. It appears from the face of the document that Anna
Dreyer, Marie Dreyer Rothblum, Steven D. Dreyer, and Dean
Dreyer signed the notice of termination in April 1981.
Bourne argued in its original brief that an assignment
executed only by Steven D. Dreyer and Dean Dreyer did not
satisfy § 304(c). § 304(c)(6)(C) provides that an assignment by
those holding termination rights "is valid only if [the
assignment] is signed by the same number and proportion of the
owners, in whom the right has vested under this clause, as are
required to terminate the grant under clause (2) of this
subsection." Bourne argued that the statute required
"[e]xecution of the purported assignment by all" who signed the
notice of termination. Main Brief at 8.
Anna Dreyer died intestate in 1984. Obviously she could not
join in an assignment to Spier in 1988. But I do not think
eliminates the power of the surviving heirs to make
assignments, since § 304(c)(2)(A) provides that "the author's
surviving children of any dead child of the author, own the
author's entire termination interest unless there is a widow or
widower Here there is no longer a widow.
§ 304(c)(2)(C) provides:
the rights of the author's children and
grandchildren are in all cases divided among them
and exercised on a per stirpes basis according to
the number of such author's children represented;
the share of the children of a dead child in a
termination interest can be exercised only by the
action of a majority of them.
Bourne derives from that division a requirement of majority
action which it also argued the assignment to Spier failed to
satisfy, since Steven and Dean Dreyer each held at most a
one-quarter interest in the copyrights, and: "Fifty percent is
not a majority." Main Brief at 8. Accordingly, Bourne
contended that the assignment executed only by Steven and Dean
Dreyer was invalid.
Spier responded to that argument by obtaining an assignment
from Marie Dreyer Rothblum, Dave Dreyer's daughter. That
assignment is pleaded in an amended complaint dated May 23,
1990 which Spier filed and served as right. As the result of
that assignment, all of Dave Dreyer's surviving heirs holding
the statutory power of termination (if they hold such power at
all, contrary to the Court's conclusion under Point I) have
executed assignments to Spier.
The Marie Dreyer Rothblum assignment does not cure the
defect, Bourne argues in its reply brief, because "[e]ach
assignment is a separate legal document conferring the rights
of a distinct party . . . and neither incorporates or
references the other assignment." Consequently, Bourne says,
neither assignment has been executed by the requisite
statutory majority. I reject this argument as exalting form
over substance. Spier can now point to one hundred percent
participation in assignments to it by those individuals who I
assume for the purpose of the present discussion own
termination rights. A sensible reading of the statute should
require no more.
For the reasons stated herein, the Clerk of the Court is
directed to enter summary judgment in favor of defendant and
against plaintiff, dismissing the complaint with prejudice.
It is SO ORDERED.