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Two musical compositions by blues artist Robert Johnson were not “published” when released on phonorecords in the late 1930s, the 9th U.S. Circuit Court of Appeals ruled June 26; therefore, the works did not fall into the public domain and a suit to determine whether the Rolling Stones infringed copyrights when the group released its own versions of the songs can proceed ( Abkco Music Inc. v. LaVere, 9th Cir., No. 98-56145, June 26, 2000). The crux of the issue, according to the opinion by Judge Pamela Ann Rymer, was whether the 1976 Copyright Act’s Section 303(b), 17 U.S.C. �303(b), which was signed into law in 1997, applies retroactively. That section states 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.” Two songs were at issue in this case, “Love in Vain” and “Stop Breakin’ Down.” Both were written by Johnson and recorded by him before he was murdered in 1938. “Stop Breakin Down” was released on a phonorecord in 1938, and “Love in Vain” was released in 1939. No copyright registration was filed for either song. In the late 1960s and early 1970s, the Rolling Stones recorded and released its own versions of the songs. These adaptations list Mick Jagger and Keith Richards as the authors. Abkco Music Inc. owns a music library that includes the songs. In 1990, Columbia Records released a two-CD boxed set of Johnson’s works that included “Stop Breakin’ Down” and “Love in Vain.” Stephen LaVere, d/b/a King of Spade Music Inc., to whom Johnson’s rights were assigned, filed a copyright registration for the Columbia release. In February 1993, LaVere (through Delta Haze Inc.) demanded that Abkco cease and desist from using unlicensed versions of Johnson’s songs. When settlement talks between the companies broke down, Abkco filed this suit in 1995, seeking a declaratory judgment that Johnson’s versions of the songs were in the public domain. Delta Haze counterclaimed for a declaration that no protectable copyright interest exists in the Rolling Stones’ versions of the songs and that it, not Abkco, owns the copyrights. The U.S. District Court for the Central District of California, following 9th Circuit precedent, held that Johnson’s versions of the songs were in the public domain and, therefore, that Abkco owned the rights to the compositions. LaVere appealed. GENERAL RULE APPLICABLE? As they were recorded before the 1976 Copyright Act went into effect, the songs were subject to the 1909 Copyright Act. Under that act, a work was subject to common law copyright until it was “published,” at which time the common law copyright expired. If not registered, the work fell into the public domain. Phonorecordings were not covered by the 1909 act. Therefore, an issue arose as to whether the release of a phonorecord constituted a “publication.” Over time, the general rule developed that the release of a phonorecord was not a publication. The Ninth Circuit overturned that general rule in La Cienega Music Co. v. ZZ Top, 53 F.3d 950 (9th Cir. 1995), in which it held that a phonorecord released before Jan. 1, 1978 (the effective date of the 1976 act) was a publication of the underlying work. Congress, however, found that La Cienega was aberrational, and that the accepted and controlling interpretation of the 1909 act made it clear that the release of a phonorecord did not constitute publication of the underlying work. Therefore, Section 303(b) was passed in 1997 — well after this suit was filed. “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 9th Circuit wrote. 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 copyrights were not renewed for a second 28-year term, the songs would have passed into the public domain. If, on the other hand, �303(b) applies, the Johnson songs would not have been published until the 1990 Columbia release was copyrighted. 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 [sic]; and neither “Love in Vain” nor “Stop Breakin’ Down” would be in the public domain. Therefore, the issue for the court was which law applied: La Cienega or Section 303(b)? RETROACTIVITY On appeal, LaVere argued that Section 303(b) applied retroactively because Congress was clarifying, not changing, the law. Clarifying legislation, the court explained, is not subject to a presumption against retroactivity and applies to all cases pending at the time of its enactment. However, the retroactive application of a statute creating a “substantial change in the law” poses a series of potential constitutional problems. “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 constitute publication of the underlying works,” the court wrote. For example, the House Report on the amendment stated that Section 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.” Furthermore, the report said, Section 303(b) was “intended to restore the law to what it was before the decision of the 9th Circuit Court of Appeals in La Cienega Music Co. v. Z.Z. Top.” While it is literally true that Section 303(b) changed the law in the 9th Circuit, the court added, the Copyright Office’s policy always had been that the distribution of a phonorecord before 1978 did not constitute publication of the underlying work and, until La Cienega, the only precedential opinion on the subject was consistent with that policy. Once the 9th Circuit “created a circuit split,” Congress acted to clarify the law. “An amendment in the face of an ambiguous statute or a dispute among the courts as to its meaning indicates that Congress is clarifying, rather than changing, the law,” the court added. “It follows that the 1997 amendment of �303(b) was a ‘statement of what [the 1909 Copyright Act] has meant all along.’ … As such, no retroactivity problem is presented by applying it to this case.” Moreover, the court added, Section 303(b) would make no sense if intended to be applied only prospectively “because it explicitly applies to conduct occurring before January 1, 1978.” The amendment made no exception for musical compositions at issue in cases pending when the statute was enacted. The court therefore held that Section 303(b) applied, and that Johnson’s versions of the songs were not in the public domain solely as a result of having been released on phonorecords in the 1930s. It vacated the district court’s ruling and remanded the case.

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