In this post, I will examine the decision in the case of the Eleventh Circuit Court of Appeals, upholding a lower court’s ruling that absolved music producer Timbaland and various record labels of illegally sampling a 1967 Bollywood tune for the song, “Put You on the Game”.
In 1967, Shakti (the producer) and Gramophone, Saregama’s predecessor in interest, entered into an agreement regarding the soundtracks in the films produced by Shakti. The agreement was for a period of two years only and was to be governed by Indian law. In 1969-70, Shakti released the film ‘Aradhana’, which featured the song Baghon Mein Bahar Hain (‘BMBH). In 2005, the hip-hop artist ‘The Game’ released a song called ‘Put You on the Game‘ (‘PYOT) which contained a one second looped snippet from the song BMBH. Saregama filed a suit against the producers of the song PYOT for copyright infringement. You can compare the two songs here and here. (Listen out for the ‘na na na‘ sung in a female voice that is sampled in ‘Put You on the Game’ repeatedly)
Issue:
The issue before the court was quite simply whether Shakti (the producer) assigned to Saregama (the record label) any of the three exclusive rights comprised in a sound recording copyright and, if so, whether Saregama continues to hold this exclusive right today.
District Court’s decision:
Saregama and the defendants filed for summary judgement. In December 2009, the district court denied Saregama’s motion on two grounds:
- The agreement between Shakti and Saregama was on an exclusive basis for a period of two years only. Saregama had neither established that the BMBH song had been recorded during this period, granting it copyright ownership, nor did it establish ownership through any other means.
- The Bollywood song BMBH and The Game’s song PYOG were not substantially similar and that the digital sampling of BMBH in PYOG was not, therefore, legally actionable.
The copyright ownership issue:
The court observed that in order to make out a prima facie case of copyright infringement, the plaintiff, in this case Saregama, must show that firstly, it owns a valid copyright in the work and secondly that the defendants copied protected elements from it. Here, the issue for consideration was whether Saregama did in fact retain ownership over the BMBH sound recording.
Of important note is the fact that although the determination of whether Saregama possessed a valid copyright over BMBH, is to be based on an interpretation of the provisions of the Indian Copyright Act, the court noted that Saregama would still have to meet the statutory standing requirement contained in the Copyright Act of 1976, 17 U.S.C. § 501(b), which provides that only the legal or beneficial owner of an “exclusive right” has standing to bring a copyright infringement action in a United States court.
(a) Initial ownership under Indian law
The court made mention of Section 17 of the ICA as well as the IPRS case, which clearly espouses the fact that the producer of a film is considered the initial copyright owner of the musical compositions in that film (this was also a bone of contention in a similar case featuring Bappi Lahiri in the 9th Circuit, which we blogged about here).
The court also referenced S.14 of the ICA which mandates an exclusive right to perform one, two or all three of the acts listed in the section as a necessary re condition to claiming ownership of copyright in the sound recording. Essentially, a copyright owner is one who has an exclusive right to do any of the three, and establishing this fact, would also establish standing to sue.
(b) Copyright transfer under Indian law
The court assumed for the sake of convenience that Indian law governed the issue of assignment, although the result would be the same under U.S law as well. On an analysis of relevant provisions of the ICA including S.18, the court observed that an assignor would retain those exclusive rights that not assigned and the assignee would only receive an interest in those rights that were assigned exclusively to it, and not the others. This is important to establish locus standi. Since an exclusive right in any of three three identified acts is sufficient to constitute ownership, both the assignor and assignee have standing to sue in a case where they retain even one of the three exclusive rights in a sound recording.
Pre-recorded and newly-recorded tracks
There were two means by which Shakti could supply musical tracks to Saregama: (a) pre-recorded songs, which Saregama could re-record to produce new songs, or (b) newly recorded songs to be composed by musicians and artists supplied by Shakti to Saregama. The rights in the works in both these categories were assigned to Saregama on an exclusive basis for the period between January 15, 1967 to January 15, 1969.
The court analysed a few provisions of the Agreement. Firstly it noted that Clause 7 conferred on Saregama the exclusive right to re-record pre-recorded songs (including the song in contention, BMBH). However, most importantly, Clause 5 provided a temporal limitation on this exclusive right for a period of two years only. Thus, this exclusive right as regards re-recording pre-recorded songs (which included within its ambit, the subject matter of this suit) ended after a period of two years.
Lack of standing to sue
On this issue, the court ruled that through the Agreement, Shakti assigned to Saregama the right “to make any other sound recording embodying [the original sound recording].” However, this right became non-exclusive at the end of the Agreement’s two-year term, on January 15, 1969. Thus, as of the date of filing the suit, Saregama did not hold this exclusive right. As has been explained earlier, since possessing an exclusive right is necessary to constitute ownership of copyright over the sounds recording, Saregama cannot claim to possess the necessary standing to sue.
Conclusion:
Thus, the court found that although Shakti granted the exclusive right to re-record pre-recorded
songs, this exclusive right had a limited two-year duration. After the Agreement’s two-year term expired, the right became non-exclusive and thus ceased being a copyright. As a result, Saregama does not presently own a copyright in the sound recording of any pre-recorded song covered by the Agreement.
It did not approach the question of whether the song in question BMBH was covered under the Agreement, since even if it was, the right that became non-exclusive on January 15, 1969, and hence Saregama cannot claim copyright ownership over it.
Further, the court did not broach the question of whether there was substantial similarity in the two tracks to constitute copyright infringement, in view of the lack of standing to sue.
