No.08-1039

OFFICE OF THE CLERK~UPRI:: ,ME COURT, U.8.

IN THE

upreme ( ourt of t! e i tniteb tate

THOMAS STEINBECK AND BLAKE SMYLE,

Petitioners,

Go

PENGUIN GROUP (USA) INC., ET AL.,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARITO THE UNITED STATES COURT OF

APPEALS FOR THE SECOND CIRCUIT

BRIEF OF AMICI CURIAE SONGWRITERSGUILD OF AMERICA, AMERICAN

FEDERATION OF MUSICIANS, AMERICANSOCIETY OF MEDIA PHOTOGRAPHERS

IN SUPPORT OF PETITIONERS

CARL W. HAMPE CHARLES J. SANDERSOf Counsel Counsel of Record

Songwriters Guild of America Songwriters Guild of AmericaBAKER & MCKENZIE LLP ATTORNEY AT LAW, PC815 Connecticut Ave., NW 29 Kings Grant WayWashington, D.C. 20006 BriarcliffManor, NY 10510(202) 835-4259 (914) 366 6642

TABLE OF CONTENTS

INTEREST OF AMICI CURIAE ................................1

SUMMARY OF ARGUMENT .....................................3

ARGUMENT ...............................................................5

The Question Presented Is Recurring AndExtremely Important To The Maintenanceof Congress’s Copyright Bargain .....................5

Ao The Question Presented Will RecurFrequently ..............................................5

Bo Question Presented Is ExtremelyImportant To The Maintenance ofCongress’s Copyright Bargain ...............8

Co The Second Circuit Is MisreadingThe Sonny Bono Copyright TermExtension Act (CTEA) .........................13

II. The Second and Ninth Circuits areIntractably Divided on the Questionpresented ........................................................15

Ao A Split Between the 2nd and 9thCircuits Is Sufficient to RequireReview For The Music Industry ..........15

Bo All Major Music Publishers MayCommence Actions in 2nd ..................16

CONCLUSION ..........................................................17

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TABLE OF CITED AUTHORITIES

STATUTES

17 U.S.C.§ 203 ...........................................3, 6, 7, 8, 14

17 U.S.C. § 302 ..........................................................14

17 U.S.C § 304 .......................................3, 4, 6, 7, 8, 14

Sonny Bono Copyright Term Extension Actof 1998, Pub.L.No. 105-298, 111 Stat. 2827...9, 13, 14

OTHER AUTHORITIES

H.R. Rep. No. 94-1476 (1976) .....................................9

Prepared Statement of George David Weiss,President, The Songwriters Guild of America.Music licensing and small business hearing beforethe Committee on Small Business, House ofRepresentatives, 104th Cong., 2d. Sess., May 1996 9

Prepared Statement of Marybeth Peters, Register ofCopyright and Associate Librarian for CopyrightServices. Copyright term, film labeling, and filmpreservation legislation: hearings before theSubcommittee on Courts and Intellectual Property ofthe Committee on the Judiciary, House ofRepresentatives, 104th Cong., Ist Sess., June 1 andJuly 13, 1995 ............................................................. 11

S. Garfield, Money for Nothing: Greed andExploitation in the Music Industry (1996) ...............13

M. Krasilovsky et al., Th/s Business of Music:the definitive guide to the music industry (8th ed.

2000) .......................................................................... 13

World Intellectual Property Organization, Guide tothe Berne Convention for the Protection of Literacyand Artistic Works (Paris Act, 1971) ........................ 15

INTEREST OF AMICI CURIAE1

The Songwriters Guild of America ("SGA") isthe nation’s oldest and largest organization runexclusively by and for songwriters, withapproximately five thousand members nationwideand over seventy-five years of advocacy forsongwriters’ rights. We are a voluntary associationcomprised of composers and the estates of deceasedmembers. We provide a variety of services to ourmembers, including contract advice, copyrightrenewal and termination filings, and royaltycollection and auditing to ensure that they receiveproper compensation for their creative efforts. SGA’sefforts on behalf of all U.S. songwriters includesadvocacy before the U.S. Congress to obtainfavorable legislation for songwriters andparticipating as amicus curiae in litigation ofsignificance to the creators of the American canon ofpopular music. SGA’s world renowned membersinclude Ray Charles ("What I’d Say"), Harold Arlen("Over The Rainbow", "Stormy Weather"). ChuckBerry ("Johnny B. Goode", Maybellene"), JoeGarland ("In the Mood"), E.Y. Harburg ("Over theRainbow", "If I Only Had a Brain"), Johnny Mercer(’~VIoon River", Ac-Cent-Tchu-Ate The Positive").

~ Counsel of record for all parties received notice atleast 10 days prior to the due date of the amicus curiae’sintention to file this brief. The parties have consented to thefiling of this brief. No counsel for a party authored this brief inwhole or in part, and no counsel or party made a monetarycontribution intended to fund the preparation or submission ofthis brief. No person other than arnicus curiae, its members, orits counsel made a monetary contribution to its preparation orsubmission.

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Of particular note is that SGA has acted as an agentto songwriters for termination filings under theCopyright Act. Since 1978 SGA has helpedsongwriters and their heirs reclaim their worksthrough the filing of copyright termination noticesand the perfection of the termination process. Mostwriters and heirs have never been told about theirability to reclaim their works, so SGA’s first step iseducating them regarding their rights. Once theychoose to file terminations SGA researches allnecessary copyright information and files the actualtermination claim with the Copyright Office (with acopy sent to the current publisher serving as notice).After the required 2 year processing time, writersand heirs are free to reclaim their works on theeffective termination date and begin either self-publishing their works or entering into a newadministration/publishing deal. SGA to date hashelped such legendary songwriters to realize thetermination rights currently available under Section304(c)(3) of the Copyright Act as: E.Y Harburg, GusKahn, Johnny Mercer, J. Fred Coots, LeRoyAnderson, Harry Warren, Richard Rogers, andcountless others.

Amicus American Federation of Musicians of theUnited States and Canada (AFM) has 100,000professional musician members, many of whom aresongwriters and recording artists who create andperform on American sound recordings, and who areentitled to the copyright termination rights at issuein this case. Among its other activities on behalf ofmembers, the AFM works to protect the intellectualproperty interests of its members.

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As was envisioned when the termination right wasincorporated into the Copyright Act, many of AmicusAmerican Society of Media Photographers’ (ASMP)members were compelled by market forces to enterinto license and transfer arrangements to theireconomic disadvantage. For decades, they and theirheirs have been looking forward to the day whenthey could terminate those agreements and makenew bargains on a more level playing field. If leftstanding, the current decision would make them,once again, vulnerable to manipulations by entitieswith far greater market power and rob them of therights that Congress intended to give them. ASMPmembers internationally acclaimed photographerssuch as Ansel Adams, Philippe Halsman, ArnoldNewman, Richard Avedonm, Jay Maisel, VictorSkrebneski, Joyce Tenneson, Pete Turner, and EricMeola.

SUMMARY OF ARGUMENT

Amici strongly support petitioner’s writ of certioraribecause the determination in this case will havebroad and profound effects on songwriters, artistsand creators throughout the music industry fordecades to come. The plight of songwriters presentsan excellent example of the deleterious effects thatthe determination in this case will have on creators.In the next 10 years, the first wave of copyrighttermination rights under Section 203 of theCopyright Act of 1976 and under the provisions ofthe Copyright Term Extension Act of 1998 willbecome effective for some of the most famous andwell-loved songs in the great canon of Americanpopular music. Moreover, terminations of grants

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will continue under Section 304 of the Copyright Act.Pursuant to the enhanced benefits provided withexplicit intention to creators by Congress in theselegislative acts, songwriters are poised to reclaimcopyrights that music publishers have controlled forat least 35 years (and in the case of Section 304terminations, much longer). Congress instituted thetermination right as a matter of fairness, to act as aneffective safety net and estate planning mechanismfor artists such as songwriters, so that they wouldhave an incentive to pursue such an economicallyperilous profession. SGA is familiar with this intentbecause it worked closely with Members of Congressduring the drafting of the 1976 and 1998 legislationin question.

But the recent decision by the Second Circuit inSteinbeck v. Penguin threatens to nullify the verybenefits that Congress intended songwriters andother creators be able to reclaim for themselves,their families, and their heirs. And given the uniquebusiness structure of the music industry, the currentsplit between the 2nd and 9th Circuits alone on thisissue is sufficient to frustrate Congress’s intentbecause the major music publishers areheadquartered on the East and West coasts. Unlessthe Supreme Court considers the issue and reversesthe Second Circuit, the economic incentives createdby Congress for songwriters and similarly situatedcreators to practice their profession will besubstantially damaged. In order to preserve one ofAmerica’s most popular cultural components and oneof its most lucrative exports - music - the SecondCircuit’s erroneous decision must be corrected.

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ARGUMENT

The Question Presented Is RecurringAnd Extremely Important To TheMaintenance of Congress’s CopyrightBargain.

There is significant evidence in the music industryand songwriting profession alone to confirm that thequestion presented in this case will recur frequentlyover the next twenty-five years or more. The properresolution of this question is critical to maintainCongress’s "copyright bargain" between those whocreate the musical works and those entities that helpexploit such works commercially by acting as"middle men" between creators on the one hand andcopyright users and the public on the other.

The Question Presented Will RecurFrequently.

Under the terms of the Copyright Act, songwritersand the heirs and estates of songwriters will havethe opportunity to exercise their right to terminatepreviously executed grants of copyright in musicalworks by issuing notices of such terminationpursuant to the guidelines set forth in the Act. Byway of example, the following classic Americanmusical compositions may be subject to terminationin 2011 (for notice purposes) and in 2013 (foreffective dates of termination purposes):

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1957 Class: 17 U.S.C.§ (304)(d)

TitleGreat BallsOf FireCome GoWith Me

I’m Walkin’

Songwriter(s)Otis Blackwell/Jack HammerClarence Quick

AntoineDomino/DaveBartholomew

Copyright codeEU0000492696

EU0000462410

EU0000464508

Date1957-09-091957-01-16

1957-01-31

1978 Class: 17 U.S.C.§ 203

TitleBeast OfBurdenCopacabana

Heart OfGlass

Songwriter(s)Jagger/RichardsManilow/Sussman/FeldmanHarry/Stein

Copyright codePA0000021667

PAu000009986

PA0000047164

Date1978-06-261978-01-161978-09-11

In 2012 (for notice purposes) and in 2014 (foreffective dates of termination purposes), musicalworks copyrighted in 1958 and 1979 will becomeavailable for termination of transfers of copyright,and they include the following:

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1958 Class: 17 U.S.C.§ (304)(d)

Title Songwriter(s) Copyright code DateVolare Mitchell Parish EU0000531892 1958-

07-09Tequila Chuck Rio EP0000116785 1958-

02-26Yakety Yak Jerry EU0000523626 1958-

Lieber/Mike 05-02Stoller

1979 Class: 17 U.S.C.§ 203

TitleWe Are TheChampionsI Will Survive

Songwriter(s)FreddieMercuryPerren/Fekaris

Don’t Bring Jeff LynneMe Down

Copyright codePA0000030960

PA0000041104

PA0000035638

Date1979-04-201979-05-071979-06-13

In 2016, a number of memorable songs from thefertile 1960’s period of popular music (beginning inthat year with songs copyrighted in 1964) willbecome available for termination of copyrighttransfers. As these examples demonstrate, anincreasing and steady stream of termination rightswill emerge for songwriters and their heirsbeginning in 2013. There is ample evidence that theissue raised in this case will recur repeatedly withregard to some of the most significant songs of thelate 20th Century.

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To paraphrase a famous songwriter after whom theSonny Bono Copyright Term Extension Act of 1998was named, we seek to ensure that this "Beat GoesOn" just as Congress intended.2

Question Presented Is ExtremelyImportant To The Maintenance OfCongress’s Copyright Bargain.

The Second Circuit’s decision effectively allowsmusic publishers to manipulate the copyrightassignment and negotiation process and create anargument that the heirs of a songwriter haveextinguished all terminations rights in the musicalwork in question. The result of this interpretation ofthe statutory termination right allows contractualformalities to defeat an author or creator’s copyrightprotection, which is directly contrary to the last 30years of U.S. copyright law.

The decision of the three-judge panel in this case isinconsistent with the intent of Congress, whichintended in 17 U.S.C. 304(c) (with respect to pre-1978 musical works) and in 17 U.S.C. 203 (withrespect to post-1978 works) to "level the playingfield" between creators of artistic works andpublishers of the same, by allowing the creator or hisor her heirs to reclaim the copyright in their worksthat they transferred earlier in their careers, whentheir economic leverage was poor. As wellsummarized by the House Judiciary Committee

2 Copyright data: "The Beat Goes On", Salvatore

(Sonny) Bono EU0000972894, 1966-12-30

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Report to the Copyright Act of 1976, a "provision ofthis sort is needed because of the unequal bargainingposition of authors, resulting in part from theimpossibility of determining a work’s value until ithas been exploited.’’3 SGA is intimately familiarwith this legislation, as it was involved in advocatingfor the current version of the termination statutespreviously cited.

In testifying in favor of the Sonny Bono CopyrightTerm Extension Act (CTEA) before Congress in1996, then-SGA President George David Weiss(author of "What A Wonderful World") illuminatedthe underlying reasons for term extension andpreservation of the underlying termination rights4:

"Term extension has been an issue ofparamount importance to those of uscommitted to the protection ofAmerican composers and intellectualproperty for some time."

"While I believe the economic andtrade-related arguments in favor ofterm extension are persuasive on theirown, as a writer I must confess I ammost concerned about how the failure

3 H. Rept. No. 94-1476, 94th Cong, 2d Sess, at 124

4 Prepared Statement of George David Weiss,

President, The Songwriters Guild of America. Music licensingand small business hearing before the Committee on SmallBusiness, House of Representatives, 104th Cong., 2d. Sess., May1996.

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to pass such legislation will affect ournational culture. Many of our mostrevered American songs, like "Starsand Stripes Forever," "Over There,"and "Swanee," have already fallen intothe public domain. Other great worksare soon to follow.

"If we are to foster the creativityresponsible for such national treasureswe must make certain that writers aretreated fairly and have the incentiveto create new works. Those with talentto write need to be nurtured, and inthe real world this means giving themsome confidence that our system oflaws will protect their creations andallow them to support their familieswhile they are alive and after they aregone. By assuring that creators canprovide a legacy for their heirs, termextension will help on this score aswell."

Music publishers at that time proposed that haft ofthe additional 20 years of copyright term bemaintained by any assignee of the copyright, thuseffectively increasing the termination waiting periodfrom 35 years to 45 years. Congress, however,rejected that proposal. SGA was actively involved inensuring that the original 35-year bargain was leftuntouched, so that the provision remainedsympathetic to authors and their heirs. This policydecision was reflected in testimony during

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congressional debate over the CTEA by the Registerof Copyrights,5 Marybeth Peters, who stated:

"S. 483 would extend the term ofcopyright for 20 additional yearswithout making any special provisionfor ownership of the additional yearsof protection. If enacted it wouldcontinue the transfer and terminationof transfer provisions of the 1976Copyright Act. The result would bethat transferees of copyrights wouldbe the beneficiaries of the additional20 years of copyright protection unlessthe transferor made a timelytermination of the transfer.

When enacting the 1976 CopyrightAct, Congress was faced with a similarextension of the term of copyright; asstated earlier, the existing term of 56years was extended by 19 years for atotal of 75 years. There wasconsiderable debate as to who shouldbe the beneficiary of those extra 19years, the author or the owner of acopyright that had been transferred.

5 Prepared Statement of Marybeth Peters, Register of

Copyright and Associate Librarian for Copyright Services.Copyright term, film labeling, and film preservation legislation:hearings before the Subcommittee on Courts and IntellectualProperty of the Committee on the Judiciary, House ofRepresentatives, 104th Cong., 1~ Sess., June 1 and July 13,1995.

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Congress chose not to vest the rightsin those extra years in the authorswhere such authors had transferredtheir rights.

Instead it created a mechanism bywhich authors could reclaim thoserights fromtransferees--a right oftermination. With respect to suchworks the Copyright Office hasreceived and recorded notifications oftermination from 1978 to the present.

On balance, it seems that authorsshould be beneficiaries of theunexpected 20 additional years ofcopyright p rotection.

Congress, at the urging of SGA and other authors’organizations, elected to follow the advice of theRegister of Copyrights. The entire 20-year extendedcopyright term was provided to authors if they ortheir heirs or estates chose to exercise theirtermination right. Music publishers during thedebate over the CTEA sought 10 years of theadditional 20-year copyright term, but Congressrefused to provide them that benefit. Unfortunately,the Second Circuit just granted the publishers thisbenefit in its recent decision. The Second Circuit’sdecision was clearly without statutory basis, is alsoimproper copyright policy, and should be reversed.

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Co The Second Circuit Is MisreadingThe Sonny Bono Copyright TermExtension Act (CTEA).

The Second Circuit decision thwarts the intention ofthe CTEA, which was to allow authors and theirheirs the opportunity to benefit from the additional20 years of copyright term provided by the 1998 law.Regrettably, the Second Circuit decision provides a"road map" for any publishing corporation withaccess to significant legal resources to frustrateCongress’s intended beneficiaries.

Contrary to the intent of the termination rightsections of the Copyright Act, the decision belowwould allow music publishers to retain rights thatCongress intended be terminable. The ability ofmusic publishers to use their significant economicleverage to take advantage of the individual heirs (orthe estate) of a songwriter would simply overwhelmthe weaker party -- the creator. Congress clearly didnot intend for such a dilution of the terminationright to occur, yet this result would be all toocommon in the music industry, where individualcreators and artists are frequently overpowered bythe vertically integrated companies that own bothrecord labels and music publishing houses.G

6 See, e.g., S. Garfield, Money for Nothing: Greed andExploitation in the Music Industry (1986); Future of MusicCoalition mission statement: "The history of the AmericanMusic Industry is a disheartening one, which largely detailsthe exploitation of artists and musicians by opportunists andthose without the musicians’ best interests at heart."http://www.futureofmusic.org/manil~sto/, visited March 13,2009. See also, M.W. Krasilovsky and S. Shelem This Business

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Sections 304(c)(3) and 203 of the Copyright Act arerelatively straightforward, in that they provide awindow during which notice must be given prior tothe expiration of the 35-year period (for post-1978works) or of the 56-year period (for pre-1978 works)of copyright transfer, and after such notice is given,the author of a work may reclaim the copyright thathe or she originally assigned to a publisher. The all-too-common music industry scenario described in theprior paragraph is facilitated by the Second Circuit’sdecision, but is contrary to the structure and plainmeaning of the termination-right provisions.

The Second Circuit decision is also inconsistent withsignificant amendments to US copyright law in 1978and 1988, which sought to reduce the incidence of"formalities" that would defeat a finding of copyrightin a work. The Copyright Act of 1976 deleted therequirement that copyrights be renewed in order tolast for their full term, establishing the concept ofcopyright term being for the life of the author plus adefined period of years, with no "renewal formality"present to defeat the full protection of the work. 17U.S.C. 302(a). The United States then adhered tothe Berne Convention in 1988, which provided amore coherent rationale for the protection ofintellectual property and which further discouragedany "formalities" that could defeat copyright law

of Music: the definitive guide to the music industry, 8th ed,(2000) at 24-25, describing critical terms in contracts between musicpublishing companies and songwriters.

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being utilized to give economic incentives to authorsto create and disseminate their works. BerneConvention for the Protection of Literary andArtistic Works (Paris 1971).7 The Second Circuitdecision flies directly in the face of this clear trend inU.S. copyright law, by allowing a publishing entityto use a contractual formality to defeat a copyrighttermination right intended to benefit an author’sentire estate. Such a result would further frustratesongwriters and other artists from entering orremaining in their industry, and is directly contraryto the last 30 years of U.S. copyright law and policy.

II. The Second And Ninth Circuits AreIntractably Divided On The QuestionPresented

Ao A Split Between the 2nd and 9th

Circuits Is Sufficient To RequireReview For The Music Industry.

A split between the 2nd and 9th Circuits alone issufficient to create confusion in the music industry.Almost all of the critical music copyright cases arisein these two circuits, given the concentration of themusic industry on the East and West coasts. Itwould be highly disruptive to the music industry ingeneral, and to songwriters in particular, for thesetwo critical circuits to be in conflict on an issue as

7 WORLD INTELLECTUAL PROPERTY ORGANIZATION.(1978). Guide to the Berne convention for the protection of literacy andartistic works (Paris act, 1971). WIPO publication, no. 615. Geneva,World Intellectual Properly Organization.

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important as this one, and that conflict will manifestitself beginning in 2011 -- only two years away.

All Major Music Publishers MayCommence Actions In 2nd

Circuit.

There are four "major" music publishing companies in theUnited States: EMI, Warner, Universal and Sony. All ofthem have principal offices in New York. As a result, eachcan commence litigation against a songwriter seekingtermination of his or her copyright transfer in the Circuit thatis misinterpreting the benefits Congress intended to bestowon songwriters and other authors and creators. Given theirvastly superior legal resources, the publishing companiesalmost certainly will initiate such legal actions, thusfrustrating songwriters and their heirs and estates fromenjoying the benefits created by Congress to providefinancial safety-nets and security to this economicallyprecarious profession. Although the Supreme Court oftenwaits for additional Circuits to speak on an issue beforeagreeing to resolve a split, there is no legal benefit to waitinghere - and great potential economic and legal harm tosongwriters -- if the current split between the 2nd and 9th

Circuits is not immediately resolved.8

s EMI Music Publishing:75 9th Ave. New York, NY 10011United States; Warner Music Group:75 Rockefeller PlazaNew York, NY 10019 United States; Universal MusicGroup:1755 Broadway New York, NY 10019 United States;Sony/ATV Music Publishing LLC:550 Madison Ave., 5th F1.New York, NY 10022 United States

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CONCLUSION

For the reasons set forth above and in Petitioners’brief, this Court should grant the Petition for a Writof Certiorari requested in this case.

Respectfully submitted,

Charles J. SandersCounsel of Record

Songwriters Guild of AmericaAttorney at Law, PC29 Kings Grant Way

Briarcliff Manor, NY 10510

Carl W. HampeOf Counsel

Songwriters Guild of AmericaBaker & McKenzie LLP

815 Connecticut Ave., NWWashington, D.C. 20006

Dated: March 19, 2009