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Second Circuit: Songs for Italian movies not works made for hire

News and Notes Focused on the 3 Public Faces of IP Law

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An August 21 opinion of the U.S. Court of Appeals for the 2nd Circuit illustrates the concept of the work made for hire in U.S. copyright law -- and the similar concept of commissioned works in Italian law. Ennio Morricone Music Inc. v. Bixio Music Group Ltd. looked at the nature of an agreement between a composer and a movie company to write musical scores for Italian movies.

What is a work made for hire?

In U.S. copyright law, a work made for hire is one that either was:

  • Created by an employee as part of their job or
  • Created because it was commissioned or purchased for use in a collaborative work, but only if the parties signed a written agreement that expressly says that the creation is a work made for hire

In a true work made for hire, the hiring or commissioning party owns the copyright, not the hired or commissioned party that made the work.

The Italian movie soundtracks

In the 1970s and 1980s, composer Ennio Morricone wrote six musical scores as commissioned by Bixio Music Group for use in Italian movies. Morricone received a lump-sum payment and limited royalties as well as film credits and 300 LP recordings. He assigned his rights in the musical works to Bixio, which used them in the movies.

Morricone assigned his intellectual property rights to Ennio Morricone Music Inc., which pursuant to federal copyright law wanted to terminate Morricone's earlier assignment to Bixio. After 35 years, U.S. law allows the original owner to terminate an assignment, with rights to works derived from the assigned work remaining with the assignee. (In other words, if Morricone Music terminated the assignment of rights in the musical scores, the rights to the collaborative movies already made, including the musical part, would remain with Bixio).

Bixio refused, asserting that the scores were "the Italian equivalent of 'works made for hire' and therefore excepted from the right of termination." The federal trial court agreed with Bixio and granted it summary judgment.

No work for hire

On appeal, the 2nd Circuit disagreed, reversing and holding that the soundtracks were not works made for hire under either U.S. or Italian law, which the parties agreed applied to the agreement. U.S. law would have required either that Morricone was an employee of Bixio or that their agreement explicitly said the scores were works for hire, neither of which was true.

Bixio argued that Italian law governing commissioned works is comparable to the U.S. concept of works for hire and that under Italian statute, the agreement between Bixio and Morricone created a commissioned work equivalent to a work for hire that would prevent the termination of the assignment. 

The 2nd Circuit disagreed, reasoning that "authorship status" of a commissioned work under Italian copyright law has "meaningful differences" with authorship of U.S. works for hire. Namely, the employer or commissioning party in a valid work for hire arrangement acquires the copyright interest through the make-for-hire process. In Italy though, the ownership stays with the maker or author and, in this example, the composer would be a "joint-author" with the film maker in that collaborated work.

The court explained that since Italian law does not transfer total authorship to the commissioning party, the function of a commissioned work is different than a work for hire, which does vest ownership in the employer or commissioning party. Therefore, since there was not a work for hire under U.S. law or its equivalent under Italian law, the termination of the assignment of rights is available U.S. law after 35 years.



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