On July 26, 2017, the U.S. District Court for the Southern District of New York dismissed a copyright infringement claim brought by Sid Bernstein Presents, LLC (“SBP”) (owner by assignment of the intellectual property rights of the late music and event producer, Sid Bernstein, “Bernstein”) against Apple Corps Limited (a company founded by members of The Beatles) and its subsidiary Subafilms Limited (“Subafilms”), related to the raw, unedited, audiovisual footage (the “Master Tapes”) of The Beatles’ famed 1965 concert at Shea Stadium (the “Concert”).
The facts of the case are as follows: Bernstein created, produced, and promoted the Concert, which featured performances by The Beatles and several other musical acts. In this capacity, Bernstein undertook the responsibilities of raising the money for the Concert, renting the stadium, designing and building the stage, hiring the musical acts, hiring security, designing the tickets, and promoting the Concert. Bernstein also arranged for TV personality Ed Sullivan to introduce The Beatles during the Concert.
Bernstein and Nems Enterprises, Ltd., the management company of The Beatles’ manager Brian Epstein (“Nems”), entered into an agreement whereby Nems agreed to furnish the services of The Beatles to perform at the Concert (the “Concert Agreement”). The Concert Agreement granted Nems the sole and exclusive right to film and record the Concert and stated that all receipts derived therefrom belonged to Nems. Nems hired Ed Sullivan’s camera crew to film the Concert, with Bernstein’s knowledge. After the Concert, Nems retained custody of the Master Tapes and entered into an agreement with Ed Sullivan’s production company, Sullivan Productions, Inc., to develop and produce the movie, The Beatles at Shea Stadium (the “Movie”), which was first broadcast in January 1967 (the “Movie Agreement”). Under the terms of the Movie Agreement, Nems acquired all right, title, and interest, including the copyright, in the Movie, which it subsequently assigned to Subafilms in 1988, and which Subafilms registered that same year. Between 1995 and 2016, Apple Corps (through Subafilms) exploited certain audio and audiovisual footage of both the Movie and the Master Tapes in several films, audio CDs, and via various digital streaming platforms and internet websites, including www.thebeatles.com (the “Derivative Uses”).
In July 2016, SBP filed for a copyright registration in the Master Tapes, and after its registration was denied, SBP brought its claim for copyright infringement as a result of the Derivative Uses, alleging that it was the copyright author and owner of the Master Tapes by reason of Bernstein being (i) the producer of, and having made creative contributions to, the Concert, and (ii) the employer for hire of The Beatles and the other musical acts who performed at the Concert at Bernstein’s instance and expense.
The court held that SBP had no basis for claiming ownership in the Master Tapes, and thus its infringement claims could not survive a motion to dismiss. The court based this decision primarily on two theories: (i) the statute of limitations for a claim of copyright ownership had lapsed, and (ii) the Concert Agreement clearly reserved all rights to the filming and recording of the Concert to Nems and expressly excluded Bernstein from any involvement therein (which ownership structure the court held was reaffirmed by the fact that the Movie Agreement also granted Nems sole and exclusive ownership over the Movie). Despite these threshold findings, the court decided to address SBP’s ownership arguments as well.
With respect to SBP’s argument that Bernstein’s production of, and creative contributions to, the Concert made SBP an author of the Master Tapes, the court held that while the Concert itself would not have happened without Bernstein’s significant contributions, those contributions had nothing to do with the actual filming and recording of the Concert, which is what established the underlying copyright in the first place. The court held that the Concert performance in and of itself is not capable of copyright protection since the performance is not protectable unless it is fixed in a tangible medium of expression (i.e., a film or recording). Therefore, Bernstein’s lack of involvement in any aspect of the filming or recording of the Concert was fatal to SBP’s copyright claims since they were wholly unrelated to the creation of the Master Tapes and therefore he could not be an author of any copyrightable work therein.
With respect to SBP’s argument that it retained rights in the Master Tapes under the work for hire doctrine (which deems the employer to be the author for purposes of copyright ownership), the court explained that under the law applicable at the time of the Concert, work-for-hire status was to be determined based on the extent to which the hiring party provides the impetus for, participates in, or has the power to supervise the creation of the work, as well as the resources the hiring party invests in the creation of the work. Although Bernstein argued he was the employer of The Beatles, and financed and contributed to the creation of the Concert generally, the court held that this was not relevant to the question at issue and that instead the relevant inquiry was about the extent to which Bernstein provided the impetus for and invested in the filming and recording of the Master Tapes. Here the court again noted that pursuant to the express terms of the Concert Agreement, Bernstein had no control over the filming or recording of the Master Tapes. Additionally, the court noted that while Bernstein may have contributed financially to the Concert itself, it was Nems, not Bernstein, which paid Ed Sullivan’s camera crew to actually film and record the Concert and create the Master Tapes, which the court noted Bernstein never even had access to or control over. Therefore, because Bernstein did not provide any impetus or financial resources towards the actual filming of the Concert and creation of the Master Tapes, SBP failed to establish authorship over the Master Tapes under this theory as well.
Although the terms of the Concert Agreement between Bernstein and Nems, as well as SBP’s (or Bernstein’s) failure to timely take the necessary action to assert its ownership in the Master Tapes makes the court’s holding somewhat unsurprising, a key takeaway from the court’s decision is a further clarification of the scope of the Copyright Act and the nature of protectable works: mere contributions to the production of a performance, rather than the filming or recording of such production, is not a sufficient enough or relevant contribution to the work to establish copyright ownership. This holding is consistent with similar recent appellate-level case law, such as 16 Casa Duse, LLC v. Merkin (litigated by Cowan, DeBaets) which established that directorial contributions to a film are not, themselves, copyrightable (see http://law.justia.com/cases/federal/appellate-courts/ca2/13-3865/13-3865-2015-06-29.html). It remains to be seen whether SBP will appeal the decision and set the stage for another ruling that may further develop the law around the Merkin case.