ABKCO MUSIC v LAVERE, 9856145
U.S. 9th Circuit Court of Appeals
ABKCO MUSIC v LAVERE
9856145
ABKCO MUSIC, INC.,
Plaintiff-counter-
defendant-Appellee,
v.
STEPHEN LAVERE, as an individual,
No. 98-56145
dba King of Spades Music; DELTA
D.C. No.
HAZE, INC., in its corporate
CV-95-07682-TJH
capacity, dba King of Spades
Music; MIMOSA RECORDS OPINION
PRODUCTIONS, INC., in its corporate
capacity, dba King of Spades
Music,
Defendants-counter-
claimants-Appellants.
Appeal from the United States District Court
for the Central District of California
Terry J. Hatter, Jr., Chief District Judge, Presiding
Argued and Submitted
February 8, 2000--Pasadena, California
Filed June 26, 2000
Before: Pamela Ann Rymer and Raymond C. Fisher,
Circuit Judges, and Lloyd D. George, Senior District Judge.*
Opinion by Judge Rymer
SUMMARY
The summary, which does not constitute a part of the opinion of the court,
is copyrighted C 2000 by West Group.
_________________________________________________________________
Intellectual Property/Copyrights
The court of appeals reversed a judgment of the district
court and remanded. The court held that the 1997 amendment
to the Copyright Act of 1909 providing that distribution of a
phonorecord before January 1, 1978, shall not constitute a
publication of the musical work applies to pending cases.
Two songs recorded by Robert Johnson were distributed in
the late 1930s. Appellee ABKCO Music, Inc. released those
same songs recorded by the Rolling Stones in 1969 and 1972.
Appellants Stephen LaVere, Mimosa Records Production,
Inc., d/b/a King of Spades Music, and Delta Haze, Inc. (Delta
Haze) claimed legal title to the Johnson copyrights pursuant
to LaVere's agreement with the Johnson estate. LaVere had
filed a copyright registration for the Columbia Records rere-
lease of Johnson's recordings of the two songs in 1991. Delta
Haze, assignee of LaVere's rights, demanded that ABKCO
cease and desist from unlicensed use of the Johnson songs,
and protracted negotiations followed. Ultimately, in 1995,
ABKCO brought an action for declaratory relief seeking an
order that the two songs were in the public domain. Delta
Haze counterclaimed for a declaration that no protectable
copyright interest existed in The Rolling Stones' versions and
that Delta Haze, rather than ABKCO, was the sole owner of
the legal copyright in these compositions.
The district court denied Delta Haze's motions to dismiss
based on grounds that the Johnson estate was an indispensable
party and that ABKCO lacked standing. The district court
granted ABKCO's motion for summary judgment, and denied
Delta Haze's cross-motion, concluding that the Johnson ver-
sions of the songs irrevocably entered the public domain
when the copyrights were not renewed within the last year of
the initial 28-year term of copyright protection. On appeal,
Delta Haze argued that the 1997 amendment to the Copyright
Act of 1909 providing that distribution of a phonorecord
before January 1, 1978, shall not constitute a publication of
the musical work should be applied retroactively to this case.
[1] When ABKCO filed its action for declaratory relief,
there was an actual controversy with respect to rights in the
Johnson works sufficient to confer standing, despite the fact
that ABKCO failed specifically to mention one of the songs
in the complaint. The record showed that ABKCO had filed
a copyright registration on the omitted song, and that the par-
ties in prelitigation correspondence consistently understood
the dispute to involve both songs.
[2] The district court did not abuse its discretion in failing
to dismiss on the ground that the Johnson estate was an indis-
pensable party. Nothing in the record suggested that the
estate's interests diverged from Delta Haze's interests.
[3] Under the 1909 Copyright Act, the owner of a pub-
lished work could obtain federal copyright protection for it by
complying with the act's requirements; otherwise, the work
entered the public domain.
[4] The 1909 Act did not define the term "publication." The
act was initially judicially construed to provide that the sale
of phonorecords did not constitute publication.
[5] However, there was a split in judicial interpretation of
the act, with other courts holding that selling a phonorecord-
ing constituted "publication" under the act.
[6] In 1997, the act was amended to provide conclusively
that distribution before 1978 of a phonorecord would not for
any purpose constitute a publication of the work.
[7] If the judicial construction of the act that interpreted
"publication" to include record release were applied to this
case, the Johnson songs would have been published in the
1930's, the 28-year period of copyright protection under the
1909 Act would have begun to run and would have expired
without renewal in the 1960's, at which time the songs would
have passed into the public domain. If the 1997 amendment
to the act were applied, the Johnson songs would not have
been published until the 1990 Columbia release was copy-
righted, and neither song would have been in the public
domain when it was recorded by the Rolling Stones for
ABKCO.
[8] The determinative question was whether the 1997
amendment is retroactive. [9] Clarifying legislation is not sub-
ject to any presumption against retroactivity and is applied to
all cases pending as of the date of its enactment.
[10] It is evident from an examination of the legislative his-
tory of the 1997 amendment that Congress enacted the
amendment to clarify that the sale of phonorecords does not
constitute "publication" under the 1909 Act, and that Con-
gress believed the contrary judicial interpretation of the act
was aberrational. An amendment in the face of a dispute
among the courts as to the meaning of a statute indicates that
Congress is clarifying, rather than changing, the law. No
retroactivity problem was presented by applying the 1997
amendment to this case.
[11] Because the 1997 amendment controlled, Delta Haze
was entitled to a judgment on their counter-claim declaring
that the Johnson versions of the two disputed songs were not
in the public domain. However, remand was appropriate to
resolve any remaining issues.
_________________________________________________________________
COUNSEL
Anthony Kornarens, Kornarens & Howard, Los Angeles, Cal-
ifornia, for the defendants-counter-claimants-appellants.
Donald S. Zakarin (argued), Pryor, Cashman, Sherman, &
Flynn, New York, New York, and Max J. Sprecher, Lavely &
Singer, Los Angeles, California, for the plaintiff-counter-
defendant-appellee.
_________________________________________________________________
OPINION
RYMER, Circuit Judge:
The ultimate question in this case is whether a phonorecord
distributed in the late 1930s "published" the underlying work
such that the clock started ticking under the Copyright Act of
1909.1 In La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th
Cir. 1995), we held that it did. However, in 1997 Congress
amended the Copyright Act to provide that distribution of a
phonorecord before January 1, 1978 shall not constitute a
publication of the musical work. See 17 U.S.C. S 303(b). This
action (for declaratory relief that a record released in 1938-39
is in the public domain) was filed after La Cienega but before
the amendment. Thus, the appeal turns on which controls: La
Cienega or the 1997 amendment to the Copyright Act.
ABKCO Music, Inc., whose library includes two Rolling
Stones hits -- Love in Vain, released in 1969, and Stop
Breakin' Down, released in 1972 -- sought a ruling that the
versions of these two songs recorded by Robert Johnson and
distributed on a phonograph in the late 1930s were in the pub-
lic domain under La Cienega. The district court determined
on summary judgment that the Johnson versions of Love in
Vain and Stop Breakin' Down irrevocably entered the public
domain when the copyrights were not renewed within the last
year of the initial 28-year term of copyright protection. Ste-
phen LaVere, Mimosa Records Production, Inc., d/b/a King of
Spades Music, and Delta Haze, Inc., who claim legal title to
the Johnson copyrights, appeal. We now join the Sixth Circuit
in concluding that the 1997 amendment applies to pending
cases.2 Accordingly, S 303(b), rather than La Cienega, con-
trols. We therefore reverse.
I
Robert Johnson, a blues artist, recorded 29 songs before he
was murdered in 1938. Sixteen were recorded in a November
1936 session, and, after the 1936 recordings were successfully
distributed by Vocalion Records, Johnson returned to the stu-
dio in June 1937 to record 13 more songs including Love in
Vain and Stop Breakin' Down. Vocalion released Stop
Breakin' Down on March 20, 1938 and Love in Vain on Feb-
ruary 9, 1939. No copyright registration for either song was
filed. In the early 1960s, Columbia Records re-released John-
son's recordings.
In 1969, The Rolling Stones released an album called Let
It Bleed, which contained an adapted version of Love in Vain,
and in 1972, the Rolling Stones adapted Stop Breakin' Down
for their album Exile on Main Street. ABKCO's predecessor
filed a copyright registration on Love in Vain in May 1970
and ABKCO filed a copyright registration claiming protection
for The Rolling Stones' adaptation and arrangement of Stop
Breakin' Down in 1972.
Meanwhile, LaVere became interested in Johnson's music
and by 1974 had located Carrie Thompson, Johnson's sister,
who was thought to be his only surviving heir. LaVere agreed
to try to generate income from Johnson's legacy and to pay
Thompson (on behalf of Johnson heirs) fifty percent of all
royalties collected in exchange for her assignment to him of
her copyright interests in Johnson's works. LaVere formed
King of Spades Music, a publishing company to administer
the Johnson compositions and copyrights. Over time he
assigned his copyright interests to Mimosa, which in turn
assigned them to Delta Haze (whose dba is King of Spades
Music).
In 1990, Columbia Records released a two-CD boxed set of
Johnson's recordings entitled Robert Johnson -- The Com-
plete Recordings. Love in Vain and Stop Breakin' Down were
included. It was quite successful. Columbia evidently recog-
nized Johnson's common law copyrights as, eventually, did
other successful pop artists who adapted Johnson's works.
However, ABKCO did not. LaVere filed a copyright registra-
tion for the Columbia release in 1991. In February 1993 Delta
Haze demanded that ABKCO cease and desist from unli-
censed uses of the Johnson songs. Protracted negotiations fol-
lowed. When it became clear they were going nowhere and
Delta Haze threatened to sue in the summer of 1995, ABCKO
filed this action for declaratory relief on November 9, 1995.
It sought an order that the Johnson versions of Love in Vain
and Stop Breakin' Down are in the public domain under La
Cienega. Delta Haze counterclaimed for a declaration that no
protectable copyright interest exists in The Rolling Stones'
versions of Love in Vain and Stop Breakin' Down and that it,
rather than ABKCO, is the sole owner of the legal copyright
in these compositions.
Delta Haze moved to dismiss pursuant to Rule 12(b)(7) on
the grounds that the Johnson Estate was an indispensable
party and that ABKCO lacked standing. Both motions were
denied. Each party moved for summary judgment, but before
the district court could rule, S 303(b) was signed into law. The
district court granted ABKCO's motion, and denied Delta
Haze's cross-motion, holding that the Robert Johnson ver-
sions of Love in Vain and Stop Breakin' Down irrevocably
entered the public domain when the copyrights were not
renewed within the last year of the initial 28-year term of
copyright protection.
Delta Haze timely appealed.
II
We first address two arguments advanced by Delta Haze
that would require dismissal, if correct.
A
[1] Delta Haze contends that ABKCO lacks standing
because it did not allege ownership and registration with
respect to Stop Breakin' Down as well as Love in Vain, and
averred that it filed this action on account of a threatened suit
for infringement arising only from Love in Vain . We disagree
that the complaint's failure specifically to mention Stop
Breakin' Down matters, for the record shows that ABKCO in
fact filed a copyright registration (No. Eu 326810) on Stop
Breaking Down April 27, 1972 as an "adaptation of words &
music of a work in P.D." The registration reflects Mick Jagger
and Keith Richard as authors. Further, the record shows that
from Delta Haze's February 22, 1993 letter on, both parties
understood the dispute to involve all Johnson works recorded
by the Rolling Stones, including Stop Breakin' Down as well
as Love in Vain. Suit was clearly threatened in June and
August of 1995. Therefore, when ABKCO filed its action for
declaratory relief on November 9, 1995, there was an actual
controversy with respect to rights in the Johnson works suffi-
cient to confer standing. See, e.g., Coral Constr. Co. v. King
Co., 941 F.2d 910, 929 (9th Cir. 1991) (a plaintiff seeking
declaratory relief must show a very significant possibility of
future harm for standing); Hal Roach Studios, Inc. v. Richard
Feiner & Co., 896 F.2d 1542, 1555-56 (9th Cir. 1990) (for
standing a plaintiff must have a real and reasonable apprehen-
sion that he will be subject to liability if he continues to man-
ufacture his product).
B
[2] Delta Haze also argues that ABKCO's action should
have been dismissed for failure to join the Johnson Estate, the
beneficial owner of the copyrights, as an indispensable party
under Rule 19 of the Federal Rules of Civil Procedure.
Although the transactions are not entirely clear, it appears
from LaVere's declaration that the Johnson Estate acknowl-
edged his agreement with Johnson's sister, and that he and the
Administrator of the Johnson Estate entered into a contract
whereby the Estate authorized LaVere to act as the Estate's
agent for purposes of exploiting the Johnson copyrights (as he
had with Thompson) in exchange for LaVere's remitting fifty
percent of the royalties received from the boxed set of John-
son compositions. He has been doing so for years. Nothing in
the record suggests that the Estate's interests diverge from
LaVere's, or Delta Haze's, with respect to anything at issue
in this lawsuit, or that LaVere does not adequately represent
whatever interests the Estate has; they are the same as his in
establishing that the Johnson copyrights did not fall into the
public domain before the Columbia release in 1990. Under
these circumstances, we do not see how the district court
could have abused its discretion in declining to find the Estate
indispensable.
III
Turning to the central issue on appeal, Delta Haze argues
that applying S 303(b) to this case presents no retroactivity
problem because Congress was clarifying, not changing, the
law when it affirmed through S 303(b) that"[t]he distribution
of a phonorecord before January 1, 1978 shall not for any pur-
pose constitute a publication of the musical work embodied
therein." ABKCO sees the amendment to S 303 as a departure
which changed prior law and whose application to a pending
case would have an impermissible retroactive effect under
Landgraf v. USI. Film Products, 511 U.S. 244 (1994). Delta
Haze disagrees that, even if retroactivity analysis is required,
the amendment is retroactive because Congress expressly pre-
scribed its reach "for any purpose" to all releases of phonore-
cords before January 1, 1978.
A
This issue has a long history, stretching back to 1831, when
Congress first extended copyright protection to original musi-
cal compositions. At that time, there was no technology for
mechanically reproducing music, and Congress merely pro-
tected the copying of the sheet music. See Goldstein v. Cali-
fornia, 412 U.S. 546, 564 (1973). But in the latter half of the
nineteenth century, piano rolls were invented. They were an
early form of mechanical reproduction of specific musical
performances, which the Supreme Court held in 1908 did not
constitute a "copy" of the copyrighted musical composition
because they were not written or printed in tangible form.
White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1,
17 (1908). Put another way, piano rolls were a performance,
rather than a publication, of a musical composition. A year
after White-Smith, Congress passed the 1909 Copyright Act,
giving composers of musical compositions control over
recordings of their creations. See Goldstein, 412 U.S. at 565-
66. However, the intent of Congress in the 1909 Act was not
to accord recordings the same copyright status as a written
score, but
only to establish the limits of the composer's right;
composers were to have control over the recordings
themselves. Nowhere does the report indicate that
Congress considered records as anything but a com-
ponent part of a machine, capable of reproducing an
original composition, or that Congress intended
records, as renderings of original artistic perfor-
mance, to be free from state control.
Id. at 566 (emphasis in original). The 1909 Copyright Act
governed rights in musical compositions until January 1, 1978
(the effective date of the 1976 Copyright Act). See La
Cienega, 53 F.3d at 952 n.1.
[3] "Under the 1909 Act, an unpublished work was pro-
tected by state common law copyright from the moment of its
creation until it was either published or until it received pro-
tection under the federal copyright scheme." Id. at 952. When
a work was published, it lost common law protection. See id.
at 953. The owner could obtain federal protection for the pub-
lished work by complying with the 1909 Act's requirements;
otherwise, the work entered the public domain. See Twin
Books Corp. v. Walt Disney Co., 83 F.3d 1162, 1165 (9th Cir.
1996). Under S 9 of the 1909 Act, "[a]ny person . . . may
secure copyright for his work by publication thereof with the
notice of copyright required by this title." Id.
[4] The 1909 Act did not define the term "publication";
however, the Second Circuit held in Rosette v. Rainbo Record
Mfg. Corp., 546 F.2d 461 (2d Cir. 1976), that the sale of pho-
norecords in the 1950s did not constitute publication. As
explained more fully by the district court, Rosette v. Rainbo
Record Manufacturing Corp., 354 F. Supp. 1183 (S.D.N.Y.
1973), the drafters of the 1909 Act did not intend to extend
copyright protection to mechanical reproductions of musical
compositions; rather, they intended "only to give the com-
poser or copyright proprietor the control, in accordance with
the provisions of the bill, of the manufacture and use of such
[mechanical reproductions]." Id. at 1190 (quoting House
Reports, 60th Cong. 2d Sess., Vol. 1, at 9 (1909)). Therefore,
the 1909 Act did not overrule White-Smith, see id. at 1191,
and "a performance of an unpublished musical manuscript [on
a phonograph record] is not a publication." Id. at 1190. As the
court noted, this "accords with the expressed view of the
Copyright Bar and the music industry." Id.
[5] Apart from a handful of district court opinions holding
that release of a phonorecord published the underlying work,3
Rosette remained the leading case until we rendered our deci-
sion in La Cienega in 1995. There, La Cienega Music Com-
pany accused the band ZZ Top and others of copying a song
it owned called "Boogie Chillen." La Cienega had released
recordings of different versions of this song in 1948, 1950,
and 1970; ZZ Top released an album in 1973 with a song it
called "La Grange" that was similar to Boogie Chillen and
became ZZ Top's signature song. Its position was that La
Cienega's release of Boogie Chillen on phonorecords was a
publication; La Cienega argued that publication of the songs
did not occur until it filed a notice of copyright with the
Copyright Office in 1967, 1970, and 1992 respectively. See
La Cienega, 53 F.3d at 953. We declined to follow Rosette,
holding instead that selling a recording constitutes "publica-
tion" under the Copyright Act of 1909.
[6] However, in November 1997, the Copyright Act was
amended to provide that "[t]he distribution before January 1,
1978, of a phonorecord shall not for any purpose constitute a
publication of the musical work embodied therein. " 17 U.S.C.
S 303(b); see Pub. L. No. 105-80, 111 Stat. 1529 (November
13, 1997). As we have previously observed, "the result of our
holding in La Cienega has been subsequently changed by
Congress' passage and enactment of [the amendment]." Bat-
jac Productions, Inc. v. Goodtimes Home Video Corp ., 160
F.3d 1223, 1235 (9th Cir. 1998).
[7] There is no dispute that if La Cienega applies to this
case, the Johnson songs were published in 1938 and 1939
when they were released on phonorecord. The 28-year period
of copyright protection under the 1909 Act would have begun
to run at that time, expiring in 1966 and 1967. Since the copy-
rights were not renewed for a second 28-year term, the songs
would have passed into the public domain. If, on the other
hand, S 303(b) applies, the Johnson songs would not have
been published until the 1990 Columbia release was copy-
righted. The 28-year period for copyright protection would
not have been triggered until then; Johnson's copyrights
would not have run out in 1967-68; and neither Love in Vain
nor Stop Breakin' Down would be in the public domain.
[8] Thus, the question that matters is whether S 303(b) is
retroactive.
B
[9] LaVere contends that we need not be concerned with
retroactivity at all, because the purpose and effect of S303(b)
was to clarify, rather than to change, existing law. We have
long recognized that clarifying legislation is not subject to any
presumption against retroactivity and is applied to all cases
pending as of the date of its enactment:
If [the statute] were to be characterized in the latter
fashion [as a "substantial change in the law"], its
retroactive application would pose a series of poten-
tial constitutional problems. If however [the statute]
merely clarifies what [the prior statute] was origi-
nally intended to mean . . . it has no retroactive effect
that might be called into constitutional question.
Beverly Community Hosp. Ass'n. v. Belshe, 132 F.3d 1259,
1265 (9th Cir. 1997). "Normally, when an amendment is
deemed clarifying rather than substantive, it is applied retro-
actively." United States v. Donaghe, 50 F.3d 608, 612 (9th
Cir. 1994). "Given the extraordinary difficulty that the courts
have found in divining the intent of the original Congress, a
decision by the current Congress to intervene by expressly
clarifying the meaning of [the statute] is worthy of real defer-
ence . . . . We therefore honor Congress' `clarification' label
and accept [the new] provisions as a statement of what [the
statute] has meant all along." Beverly Community Hosp., 132
F.3d at 1266.
There is a good argument that the 1997 amendment simply
clarifies what the meaning of the 1909 Act was all along --
namely, that the distribution of phonorecords did not consti-
tute publication of the underlying works. As the House Report
on the 1997 amendment indicates, the bill that resulted in
S 303(b) "affirms that the distribution of a phonorecord to the
public before January 1, 1978 did not constitute publication
of a musical composition embodied in that phonorecord under
the 1909 Copyright Act. It is intended to restore the law to
what it was before the decision of the Ninth Circuit Court of
Appeals in La Cienega Music Co. v. Z.Z. Top. " H.R. Rep. No.
105-325, at 5 (1997). Thus, the Report states, S 303(b) "re-
verses the La Cienega decision and affirms in the Copyright
Act that a phonorecord released before 1978 did not constitute
a `publication' under the 1909 Copyright Act. " Id. The Report
also notes that the amendment comports with the long-
standing interpretation of the Copyright Office that release of
a phonorecord was not a "copy" for purposes of the Act, and
the Congressional Budget Office opined that the bill would
have no fiscal impact because it "would confirm the Copy-
right Office's treatment of pre-1978 musical compositions."
Id. at 4. In sum, the Report concludes:
The La Cienega decision has, therefore, placed a
cloud over the legal status of a large number of
musical works recorded and sold before January 1,
1978. Moreover, it has called into question the long
established interpretation of the Copyright Office. It
is the intent of this section to remove the cloud and
bring the law into conformity with the Second Cir-
cuit opinion and Copyright office practices.
Id. at 5.
Members of Congress expressed the same view. For exam-
ple, Senator Leahy, a Senate co-sponsor, said the bill "was
intended to clarify the Copyright Law of 1909 on an issue that
has become a matter of increasing litigation in a number of
Federal Circuits since the Ninth Circuit decision in the ZZ
Top case." 143 Cong. Rec. S11498 (1997). Senator Hatch,
also a sponsor and Chair of the Senate Judiciary Committee,
remarked that "Rosette comports with the nearly universal
understanding of the music and sound recording industries
and of the Copyright Office"; "overturning the La Cienega
decision will restore national uniformity on this important
issue by confirming the wisdom of the custom and usage of
the affected industries and of the Copyright Office for nearly
100 years." 143 Cong. Rec. S11301 (1997). Similarly on the
House side, Representative Coble, who sponsored the legisla-
tion and chaired the House Judiciary Committee Subcommit-
tee on Courts and Intellectual Property, introduced the bill on
the floor by explaining that it "clarifies that the distribution of
a phonorecord before January 1, 1978, did not constitute a
publication of the musical work embodied therein. " 143
Cong. Rec. H9882 (1997). Representative Bono stated that
the bill was needed because La Cienega "has jeopardized the
private property rights for thousands of creative individuals
who live within the jurisdiction of the Federal Court of
Appeals of the Ninth Circuit." 143 Cong. Rec. H9882 (1997).
And Representative Berman noted that composers had "rel-
[ied] on an industry standard of many decades duration," a
"long-time understanding of copyright law [which] has been
ratified and reaffirmed by the Second Circuit.""The La-
Cienega decision took that settled law and cast it on its head,
threatening to thrust into the public domain hundreds of thou-
sands of musical works which presently enjoy copyright pro-
tection." 143 Cong. Rec. H9882 (1997).
[10] From this record it is evident that Congress believed
La Cienega was aberrational, that Rosette was the accepted
and controlling interpretation, and that S 303(b) was enacted
to make this clear. ABKCO points out that even if this is so,
and even assuming that S 303(b) "clarified " that the Second
Circuit's construction in Rosette was correct, the effect was to
change the law in the Ninth Circuit. Of course this is literally
true, but the policy of the Copyright Office had always been
that distribution of a phonorecord before 1978 does not pub-
lish the underlying musical composition, and Rosette was the
only precedential interpretation until ours in 1995. Once we
created a circuit split, Congress acted to make clear that "pub-
lication" in the 1909 Copyright Act, which it did not define
in the Act itself, meant what Rosette and the Copyright Office
said it meant with respect to mechanical reproductions such
as phonorecords. An amendment in the face of an ambiguous
statute or a dispute among the courts as to its meaning indi-
cates that Congress is clarifying, rather than changing, the
law. See, e.g., Bedoni v. Navajo-Hopi Indian Relocation
Comm'n., 878 F.2d 1119,1121 (9th Cir. 1989) ("Where, as
here, an act is ambiguous, an amendment thereto is an indica-
tion that it is intended to clarify, rather than change, the exist-
ing law.") (citation, internal quotations, and alterations
omitted); Calejas v. McMahon, 750 F.2d 729, 731 (9th Cir.
1994) ("The mere fact of an amendment itself does not indi-
cate the legislature intended to change a law . . . . [A] dispute
or ambiguity, such as a split in the circuits, is an indication
that a subsequent amendment is intended to clarify, rather
than change, the existing law.") (citations, internal quotations,
and alterations omitted). It follows that the 1997 amendment
to S 303 was a "statement of what [the 1909 Copyright Act]
has meant all along." Beverly Community Hosp. , 132 F.3d at
1266. As such, no retroactivity problem is presented by apply-
ing it to this case.
However, ABKCO insists that S 303(b) cannot be applied
to its pending case without running afoul of Landgraf because
Congress did not clearly and unequivocally require retroactive
application. It suggests that nothing can be inferred from the
fact that the only recordings to which the amendment could
possibly apply were those released before 1978, because pub-
lication no longer determined copyright status for recordings
released after 1978; nor does declaring that the amendment
"take effect on enactment" imply that it should apply to pend-
ing cases. We do not agree. Section 303(b) would make no
sense if it were to be applied solely prospectively, because it
explicitly applies to conduct occurring before January 1,
1978. Congress unequivocally declared that phonorecord dis-
tribution prior to January 1, 1978 did not constitute publica-
tion of the musical compositions and made no exception for
musical compositions at issue in cases pending at the time of
the statute's enactment. The Sixth Circuit considered the same
problem in Mayhew v. Allsup, 166 F.3d 821 (6th Cir. 1999),
and its reasoning is persuasisve:
It is clear from the language employed that S 303(b)
should be applied to pending cases. First, the subsec-
tion obviously applies to pre-enactment conduct. In
fact, it applies only to the distribution of records
prior to January 1, 1978. Thus, applying the statute
to pending cases has no impact on the conduct that
is the subject of the subsection. Second, the subsec-
tion provides that the distribution of phonorecords
"shall not for any purpose constitute a publication."
This court would be defying the express mandate of
the statute if it were to decide on de novo review that
phonorecord distribution constitutes publication.
Finally, the presumption against retroactive applica-
tion of statutes is based, in part, on a hesitancy to
reverse settled expectations. In enacting S 303(b),
however, Congress has resolved a problem of unset-
tled expectations that had arisen from the circuit
split. We conclude that S 303(b) should be applied in
resolving the present appeal.
Id. at 824 (citations omitted). We agree, and hold that
S 303(b) controls. Because S 303(b) controls, the Johnson ver-
sions of Love in Vain and Stop Breakin' Down were not in the
public domain solely on account of their being released on
phonorecords in the 1930s.4
IV
[11] Delta Haze also asks for reversal of the district court's
denial of its cross-motion for summary judgment and, failing
that, argues that judgment should have been granted on its
counterclaims. To the extent that its cross-motion is the mirror
image of ABKCO's, Delta Haze is entitled to a judgment
declaring that the Johnson versions of Love in Vain and Stop
Breakin' Down did not enter the public domain when the pho-
norecords on which they were recorded were released in 1938
and 1939. Beyond this, however, we believe the district court
is in a better position than we to sort out the issues that
remain. For example, Delta Haze argues that ABKCO can
have no ownership interest in The Rolling Stones' versions of
the two works because The Rolling Stones added no original
material. This may, or may not, raise triable issues -- a point
that we assume the district court has never considered, given
its ruling that the Johnson works were in the public domain
when The Rolling Stones made its adaptations.
ABKCO argues that dismissal of Delta Haze's counter-
claim was proper because it never threatened to sue for
infringement, therefore there was no controversy between
them to give the district court subject matter jurisdiction. But
we cannot be certain of this, for the counterclaims appear to
contest ABKCO's claim to any protectable interest in the
adaptation performed by the Rolling Stones. In addition,
ABKCO contends that whatever claim Delta Haze might be
able to state is time-barred. Again, these issues are best left
to the district court on remand.
Because we cannot tell from the district court's order why
it dismissed the counterclaims (it could simply have been that
the counterclaims necessarily fell given the decision that the
Johnson versions were in the public domain), we vacate the
order dismissing the counterclaims. In doing so, we intimate
no view one way or the other on the merits of the counter-
claims or any motions that may be made with respect to them.
To summarize: we reverse the order and judgment granting
ABKCO's motion for summary judgment; we order judgment
to be entered for Delta Haze that the Robert Johnson versions
of Love in Vain and Stop Breakin' Down did not enter the
public domain when phonorecords embodying those works
were released before 1978; and we vacate the judgment for
ABKCO on Delta Haze's counterclaims.
REVERSED and REMANDED.
_______________________________________________________________
FOOTNOTES
*Honorable Lloyd D. George, Senior United States District Judge for
the District of Nevada, sitting by designation.
1 Under the 1909 Act, a properly registered artistic work receives copy-
right protection for 28 years from the date of first publication, renewable
once for another 28 years. See Copyright Act of 1909, ch. 320, S 23, 35
Stat. 1075, 1080. The Copyright Act of 1976 amended the 1909 Act
(effective January 1, 1978) in ways that are not material to this case. Prior
to the 1997 amendment, S 303 provided:
Copyright in a work created before January 1, 1978, but not
theretofore in the public domain or copyrighted, subsists from
January 1, 1978, and endures for the term provided by section
302. In no case, however, shall the term of copyright in such
work expire before December 31, 2002; and, if the work is pub-
lished on or before December 31, 2002, the term of copyright
shall not expire before December 31, 2027.
Amended S 303 now provides:
(a) Copyright in a work created before January 1, 1978, but not
theretofore in the public domain or copyrighted, subsists from
January 1, 1978, and endures for the term provided by section
302. In no case, however, shall the term of copyright in such a
work expire before December 31, 2002; and, if the work is pub-
lished on or before December 31, 2002, the term of copyright
shall not expire before December 31, 2047.
(b) The distribution before January 1, 1978, of a phonorecord
shall not for any purpose constitute a publication of the musical
work embodied therein.
Pub. L. 105-80, S 11, Nov. 13, 1997, 111 Stat. 1534; Pub. L. 105-298,
Title I, S 102(c), Oct. 27, 1998, 112 Stat. 2827.
2 See Mayhew v. Allsup, 166 F.3d 821 (6th Cir. 1999).
3 See McIntyre v. Double-A Music Corp., 166 F. Supp. 681 (S.D. Cal.
1958) (release on phonorecord constituted publication under the 1909
Copyright Act); Shapiro, Bernstein & Co. v. Miracle Record Co., 91 F.
Supp. 473 (N.D. Ill. 1950) (release of phonorecord published the musical
work); Mills Music, Inc. v. Cromwell Music, Inc., 126 F. Supp. 54
(S.D.N.Y. 1954) (manufacture and sale of phonorecords was a publica-
tion).
4 Given our conclusion that S 303(b) applies, we do not reach Delta
Haze's argument that even under La Cienega, the district court's grant of
summary judgment to ABKCO was improper because there were triable
issues of fact regarding whether the songs were released with Johnson's
consent or authorization.