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The Dilemma Facing Awards of Copyright Statutory Damages in the Music Context

Francyn Brown

INTRODUCTION

The nature of music consumption by the public has changed dramatically throughout

history. Starting out in its purest form, mass audiences started by consuming music through live

performances. Then, in the early 1900’s radio stations broadcast music to their listeners around

the world and through the invention of the phonograph and gramophone, audiences were able to

listen to music of their choice in the privacy of their homes.1 By 1975, 4-track and 8-track

cassette tapes inundated car stereos and boomboxes, and in the early ‘80’s through the ‘90’s,

CD’s were introduced for consumption.2 In 2001 the first-generation iPod was made available to

the public using digitized music.3 Now in present day, audiences still consume music through

MP3 devices, broadcast radio, and gramophones but the rise of internet radio and digital music

has truly changed the music game forever.4

The Copyright Act’s5 current statutory damages provision took effect in 1978 and the

only amendments made since that time were non-substantive.6 Because of the lack of

amendments made since 1978, the courts have had the responsibility of interpreting the statute as

it pertains to the ever-changing music industry and issues between the circuits arise. To illustrate

where the dilemma concerning copyright statutory damages comes from, it is helpful to compare

the release and consumption of the Pink Floyd record The Wall (released in 1979) with the

1 Jack Preston, Infographic: A brief history of music players, Virgin Group Blog (July 2, 2014),

https://www.virgin.com/music/infographic-brief-history-music-players. 2 Id. 3 Id. 4 Id. 5 17 U.S.C. §§ 101 to 1332. 6 In 1988 and 1999, amendments were made to increase the money values of the amounts awarded (see 17 U.S.C.A.

§ 501 (Amendments)) and in 2004 an amendment added a subsection defining willful infringement in domain name

copyright cases (see 17 U.S.C.A. § 501 (Amendments)).

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Beyoncé album Lemonade (released in 2016). When Pink Floyd released its album, it was

distributed to audiences as a double-album on a vinyl record containing 26 songs.7 If a person

wanted to listen to a single song on the record, he had to purchase the whole record and could not

purchase the song individually, even if each song was listed separately, and registered separately

in the copyright office.8 In contrast, when the Lemonade album was released, a person could

either purchase the album as a whole or purchase each song individually; both by way of digital

download.9 The landscape of music consumption has therefore changed dramatically with how

audiences buy and listen to albums and thus has affected the application of the Copyright Act in

an infringement case. In 1979, a court could reasonably conclude that an album of music

constituted one “work” for statutory damages purposes because that is how the audience

consumed the music. In 2016, it is just as reasonable for a court to conclude that each song on an

album of music constitutes a separate “work” for statutory damages purposes– entitling the

copyright owner to a better award. This paper seeks to illustrate the different methods by which

the circuits determine what constitutes a “work” for purposes of computing the statutory

damages as well discuss the issues that arise where a plaintiff in a copyright infringement case is

a co-owner of a joint work of copyright.

First, this paper analyzes the legislative history of the Copyright Act to ascertain the

legislative intent behind the “work” language that is included in the statutory damages provision

of the statute. Then, this paper discusses the two tests utilized by the circuits in determining

whether each song on an album constitutes a “work” for statutory damages purposes or whether

the album as a whole constitutes a “work” for statutory damages purposes. The two tests are the

7 Studio Albums, http://www.pinkfloyd.com/music/albums.php (accessed Nov. 30, 2017). 8 This hypothetical assumes that Pink Floyd did not release any of the songs on The Wall album as singles. 9 Beyoncé, https://www.beyonce.com/album/ (accessed Nov. 30, 2017).

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independent economic value test and the issuance test. Based on the analysis of the cases and the

policy considerations involved, the correct method for determining statutory damage awards is

the independent economic value test. Therefore, each song incorporated into an album is entitled

to a separate award of statutory damages.

Later, this paper analyzes the amount of damages in recovery a plaintiff who is a co-

owner of a joint work is entitled to for the infringement of the joint work. Ultimately, a co-owner

of a joint work is entitled to 100% of the awarded damages and the Court should not be

determining the plaintiff/co-owner’s share in the copyrighted work and only awarding that share

of damages to the plaintiff/co-owner.

I. Each Song Recorded on an Album is Entitled to a Separate Award of Statutory

Damages.

To start the analysis, the first place to look is the statutory text itself and the legislative

history that accompanies it. The next place to look is the cases from each federal circuit to

ascertain exactly how each circuit decides which test to use.

A. The Copyright Act– 17 USC § 504(c)

The text of the statutory damages provision of the Copyright Act states:

the copyright owner may elect, at any time before final judgment is rendered, to recover,

instead of actual damages10 and profits, an award of statutory damages for all

infringements involved in the action, with respect to any one work, for which any one

infringer is liable individually, or for which any two or more infringers are liable jointly

and severally, in a sum of not less than $ 750 or more than $ 30,000 as the court

considers just. For the purposes of this subsection, all the parts of a compilation or

derivative work constitute one work.11

10 The provision in the Copyright Act about actual damages is outside the scope of this paper. An award of actual

damages does not implicate the same copyright “work” issues as discussed in this paper. Additionally, a plaintiff is

entitled to recover either actual damages or statutory damages so the two concepts are wholly separate and thus the

calculations of both do not overlap and leaving out an analysis of the actual damages provision does not implicate

the conclusions in this paper. 11 17 USC § 504(c)(1) (emphasis added).

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As noted above, the successful plaintiff is entitled to an award of statutory damages with respect

to any one work. But, the issue becomes, what qualifies as one work? Importantly, §504(c)

makes clear that “[f]or the purposes of this subsection, all the parts of a compilation or derivative

work constitute one work.”12 The Copyright Act then defines what compilation means and what

derivative work means. A derivative work is defined as “a work based upon one or more

preexisting works, such as a ... sound recording” and a compilation is a “work formed by the

collection and assembling of preexisting materials or of data that are selected, coordinated, or

arranged in such a way that the resulting work as a whole constitutes an original work of

authorship.. and includes collective works.”13 A collective work is defined as “[a] work, such as

a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting

separate and independent works in themselves, are assembled into a collective whole.”14

Therefore, then, a compilation was intended to be broader than a collective work and a collective

work includes separate and independent works. While this fact alone is not illuminating of

Congress’ intent behind the term “work” in § 504(c), it does give merit to the argument that each

song in an album is one work on its own. An album cannot likely be seen as a compilation

because it is not the assembly of preexisting materials that result in an original work of

authorship when combined.

Now, to go to the legislative history, the wording in § 504(c) was reworked in response to

concerns under the Copyright Act of 1909 § 101(b), which differed from § 504(c) by awarding

statutory damages on a per-infringement basis.15 The new language in § 504(c) was in response

to a report put together by the Copyright Register (which is an officer of the Library of

12 Id. 13 17 USC § 101. 14 Id. 15 Pub.L. 60–349 (1909).

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Congress) that said that multiple infringers would only be liable together for a single award in

damages per infringement for which they were found to be infringing.16 As a result, Copyright

professionals argued that that would enable multiple infringers to continue to infringe the same

copyrighted work as many times as they want and the copyright owner would only be entitled to

damages from one of the infringers so Congress responded with the new language in § 504(c)

that says that there is one award of damages from each single infringer per work infringed.17

Further, the House Report provides the example that “if one defendant has infringed three

copyrighted works, the copyright owner is entitled to statutory damages of at least $ 750 and

may be awarded up to $ 30,000,” which is an award per infringed work.18 Nothing in the

legislative history indicates that Congress believed § 504(c)(1) should, or should not, entitle a

plaintiff to multiple awards of statutory damages when multiple copyrightable elements

contained in an album or compilation are infringed.

But, on a related note, “[while] the minimum and maximum amounts are to be multiplied

where multiple ‘works’ are involved in the suit, the same is not true with respect to multiple

copyrights, multiple owners, multiple exclusive rights, or multiple registrations.”19 This point is

especially important since, under a scheme of divisible copyright, it is possible to have the rights

of a number of owners of separate “copyrights” in a single “work” infringed by one act of a

defendant.20 Therefore, if a number of copyright owners own exclusive rights in a single work,

16 See, e.g., H.R. Rep. No. 94-1476, at 162 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5778 (“[A]n award of

minimum statutory damages may be multiplied if separate works and separately liable infringers are involved in the

suit, a single award in the $ 250 to $ 10,000 range is to be made ‘for all infringements involved in the action.’ A

single infringer of a single work is liable for a single amount between $ 250 and $ 10,000, no matter how many acts

of infringement are involved in the action.” 17 See, e.g., H.R. Rep. No. 94-1476, at 162 (1976). 18 H.R. Rep. No. 94-1476, at 162 (1976). 19 H.R. Rep. No. 94-1476, at 162 (1976); S. Rep. No. 94-473, at 144 (1975). 20 This lends support to the argument that even though a song may contain multiple copyrights and have multiple

copyright owners, i.e. a copyright for the music, a copyright on the sound recording, a copyright on the lyrics, etc.,

an infringer is only liable for one award of damages for the song as one work and not liable for each copyrightable

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the defendant will only be liable for damages to the one work and not separately to each

copyright owner. So, where a song is infringed by an act of the defendant, then the defendant is

liable for one award of statutory damages for the one song as a whole. Therefore, the Copyright

Act’s legislative history does not actually provide clarity on what exactly constitutes a work

itself; rather it points out how and to whom the statutory damages are to be calculated.

B. The Independent Economic Value Test is the Best Test to Compute

Copyright Statutory Damages Accurately.

As stated supra, there are two tests utilized by the circuits in determining whether or not

each song on an album constitutes a “work” for statutory damages purposes, which results in a

significant circuit split. The two tests are the independent economic value test and the issuance

test. The Second Circuit has crafted and adopted the “issuance” test. The issuance test to

calculate statutory damages asks “whether the plaintiff--the copyright holder--issued its works

separately, or together as a unit.”21 The First Circuit, Ninth Circuit, Eleventh Circuit and the

District of Columbia Circuit have all crafted and adopted the independent economic value test. In

assessing the independent economic value of the “work” infringed upon, the courts look to see

whether customers have access to the parts of the copyrighted “work” at issue.22 Thus, courts

here are mainly concerned with whether the infringed-upon “work” had parts that were

accessible to customers in a manner that created “separate economic value and copyright lives of

their own.23

1. The Second Circuit’s Issuance Test is Not the Best Test for Courts to Use.

element of that song. For purposes of statutory damages, every copyrightable element of the song is not considered a

separate “work.” See H.R. Rep. No. 94-1476, at 162 (1976). 21 Bryant v. Media Right Prods., Inc., 603 F.3d 135, 142 (2d Cir. 2010). 22 Betselot A. Zeleke, Federal Judges Gone Wild: The Copyright Act of 1976 and Technology, Rejecting the

Independent Economic Value Test, 55 How. L.J. 247, 258–59 (2011). 23 Id.

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Starting with the Second Circuit, in defining a “work,” the Second Circuit focuses on the

manner in which the copyright holder released the copyrighted material to the public; this is

known as the issuance test. First in 1976, Robert Stigwood Grp., Ltd. v. O'Reilly24 decided that

“when the components of the infringing activity are heterogeneous, the presumption is that each

infringing activity is a separate infringement.”25 The court held that each of the forty-eight

performances of a rock opera tour constituted separate infringements for purposes of assessing

statutory damages under the 1909 Act.26

Later, in 1993, the court in Twin Peaks Productions, Inc. v. Publications International,

Ltd. 27 revisited the statutory damages issue under the current Copyright Act.28 In Twin Peaks,

the copyright holder issued episodes of a television show sequentially.29 The defendant then

compiled the episodes into one book and sold them without the copyright holder's

authorization.30 The court noted that Stigwood may retain some relevance under the 1976 Act in

its recognition that three songs performed in the musical would support separate statutory

damages awards, but that three “overlapping copyrights on substantial parts of the entire work”

would support only a single award. But, the court reasoned that “[Stigwood] has no application to

separately written teleplays prepared to become episodes of a weekly television series.”31 The

Second Circuit awarded separate statutory damages for each episode of the series because,

24 Robert Stigwood Grp., Ltd. v. O'Reilly, 530 F.2d 1096, 1103 (2d Cir. 1976), cert. denied, 429 U.S. 848 (1976). 25 It is important to note that this decision holds less relevance because it relies on the premise that a copyright

owner can recover statutory damages per act of infringement which is no longer the law. Now, as mentioned supra,

a copyright owner can only recover one award of damages for all the infringements by a single tortfeasor. 26 Id. 27 Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993). 28 Id. at 1380-1382. 29 Id. 30 Id. 31 Id.

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despite the fact that the plot from each episode continued from one episode to another, this

plaintiff did not release the episodes as a single “work.”32

Then, in UMG Recordings, Inc. v. MP3.COM, Inc. 33, the court explicitly rejected the

independent economic value test.34 In rejecting the independent economic value test, the court

declared that it is the court's duty to decline to adopt a test that is clearly against Congress'

mandate because defying Congress would be unconstitutional. The court reasoned that if such a

test were applied, the result would be to make a total mockery of Congress' express mandate that

all parts of a compilation must be treated as a single “work” for purposes of computing statutory

damages, since, as the House Report expressly recognizes, the copyrighted parts of a compilation

will often constitute “independent works for other purposes.”35 According to the Second Circuit,

once a court decides that the infringement occurred on a compilation of a single “work,” the

statute does not authorize the court to look any further to see whether parts of the single “work”

have any independent economic value. The analysis here by the UMG Recordings court is one

that I wholeheartedly disagree with.

WB Music Corp. v. RTV Communication Group, Inc.36 followed Twin Peaks and held that

each of the plaintiffs' separate copyrighted works constitutes one work for purposes of §

504(c)(1).37 The district court had previously computed statutory damages based on seven

“compilations,” in the form of compact discs prepared by the defendants, that infringed the

copyrights in thirteen separate works owned by the plaintiffs. The defendant infringed on thirteen

32 Id. 33 UMG Recordings, Inc. v. MP3.COM, Inc., 109 F. Supp. 2d 223 (S.D.N.Y. 2000). 34 Id. at 225. 35 See, Id. (“The Act specifically states that all parts of a compilation must be treated as one work for the purpose of

calculating statutory damages. This language provides no exception for a part of a compilation that has independent

economic value.”). 36 WB Music Corp. v. RTV Commc'n Grp., Inc., 445 F.3d 538 (2d Cir. 2006). 37 Id. at 541.

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separate works by compiling these works onto 7 different CDs. The court here reasoned that

because the defendant created the compilation of CDs, and not the plaintiff, thus without the

copyright holder's authorization, each song constituted a separate “work” and the court awarded

statutory damages for each of the 13 separate works rather than the 7 CDs that the defendant

created.38 The court also pointed out that “there is no evidence here that any of the separately

copyrighted works were included in a compilation” by the plaintiff.39 Therefore, these Second

Circuit cases likely suggest that the way in which the plaintiff released the copyrighted works

influences the way statutory damages will apply to a “work.”

In Bryant v. Media Right Prods. Inc.40, the court concluded the integral factor in

calculating statutory damages was “whether the plaintiff--the copyright holder--issued its works

separately, or together as a unit.”41 The defendants sold physical copies of the plaintiff’s CDs

and later the defendants sold the CDs in a digital format over the internet. Once in its digital

format, the defendants also sold the songs individually. Because the plaintiff authorized its music

to be sold only in physical CD formats, where all songs were sold together in one album, the

court concluded that the relevant “work” for purposes of statutory damages was each album,

limiting the plaintiff to a single statutory damages award for the infringed CD. Up to this point,

the courts that employed the independent economic value test had still not applied that test to an

album of music, so the Second Circuit in Bryant distinguished this case and held that the

independent economic value test does not apply here. Importantly, the Bryant court noted that

“we cannot disregard the statutory language simply because digital music has made it easier for

38 Id. 39 Id. 40 Bryant v. Media Right Prods. Inc., 603 F.3d 135 (2d Cir. 2010). 41 Id. at 142 (“Here, it is the copyright holders who issued their works as “compilations”; they chose to issue

Albums. In this situation, the plain language of the Copyright Act limits the copyright holders' statutory damage

award to one for each Album.”)

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infringers to make parts of an album available separately.”42 The view taken here by the Bryant

Court is mistaken; allowing a copyright owner to recover a separate award of damages for each

digital song that was infringed is not against the statutory language as written. As I explained

above, the language in the statute actually does not specify what defines a “work” in the music

realm. The appropriate interpretation of the Copyright Act, is that a single song is considered a

“work” for purposes of damages when it is possible for the song to be consumed outside of the

album. Congress’ intent behind legislating that “[f]or the purposes of this subsection, all the parts

of a compilation or derivative work constitute one work,” was to further establish that where a

number of copyright owners own exclusive rights in a single work, the defendant will only be

liable for damages to the one work and not separately to each copyright owner (as further

explained above) and not to be read as establishing that a song contained on an album is a

compilation or derivative work for statutory damages purposes.43

Following the decision, the Bryant case was appealed to the Supreme Court and cert was

denied on November 29, 2010 without any opinion from the Supreme Court.44 Notably, the

petitioner included the circuit split as a reason for the Supreme Court to grant the petition. This

point is important to note because while there are multiple reasons why the Supreme Court

would deny cert, the most likely reason here was because the Supreme Court didn’t think the

circuit split was significant, or thought that both methods in computing damages was legitimate.

In 2011, however, the United States District Court for the Southern District of New York

in Arista Records LLC v. Lime Grp. LLC45, concluded that the plaintiffs were entitled to a

separate statutory damage award from defendants for each “work” infringed, which included a

42 Id. 43 17 USC § 501(c). 44 Bryant v. Media Right Prods., Inc., 562 U.S. 1064 (2010). 45 No. 06 CV 5936 KMW, 2011 WL 1311771, at *3 (S.D.N.Y. Apr. 4, 2011).

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sound recording issued both as an individual track and as part of an album. Importantly, the court

noted that “nothing in the Copyright Act bars a plaintiff from recovering a statutory damage

award for a sound recording issued as an individual track, simply because that plaintiff, at some

point in time, also included that sound recording as part of an album or other compilation.”46

And in 2014, the same federal district court in New York, in Capitol Records, Inc v. MP3tunes,

LLC,47 applied the same test as Bryant but concluded that when the sound recordings contained

on an album were made separately commercially available as individual tracks through online

digital retail services, such as Apple's iTunes Store, the plaintiff is entitled to a per-song statutory

damages calculation, irrespective of whether the tracks had separately been included on albums.

This is the same as the analysis applied using the independent economic value test employed by

other circuits. The court reasoned that “when a copyright holder or publisher issues material both

on an individual basis and as part of a compilation, the Copyright Act permits a statutory

damages award for each individual work offered separately.”48 But, “a copyright owner may

only recover once for a sound recording that is available both as a single and as part of a

compilation.”49

The most recent case regarding statutory damages in the Second Circuit, EMI Christian

Music Grp., Inc. v. MP3tunes, LLC50, reversed the Capitol Records case in part when it held that

plaintiffs could recover only one statutory damages award for a musical composition and its

corresponding sound recording, even where the composition and the recording were owned by

separate plaintiffs.51 The EMI court looked to the statutory language in the Copyright Act in

46 Id. 47 Capitol Records v. MP3tunes, LLC, 2014 WL 4851719, *12 (S.D.N.Y. Sep. 29, 2014). 48 Id. at *11. 49 Id. at *13. 50 EMI Christian Music Grp., Inc. v. MP3tunes, LLC, 844 F.3d 79, 94 (2d Cir. 2016). 51 The Capitol Records case concluded that multiple copyright owners could both recover damages on the

copyrighted work that they owned even if they overlapped.

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determining that Congress did not intend for separate statutory damages awards for derivative

works such as sound recordings, even when the copyright owner of the sound recording differs

from the copyright owner of the musical composition.52 However, this case does not form any

conclusions as to whether a song in an album constitutes a “work” for statutory damages

purposes. There is dicta to suggest that even where there are several different versions of a work,

and each of which commands a separate copyright, the Copyright Act provides for a single

statutory damages award. The Second Circuit is concluding that a copyright owner cannot

recover twice for a single song.

2. The Independent Economic Value Test is the Appropriate Method for

Calculating Statutory Damages.

Although the Second Circuit has rejected the independent economic value test, the First

Circuit, the Ninth Circuit, the Eleventh Circuit, and the District of Columbia Circuit have crafted

and adopted the test.

In 1990, the DC Circuit Court in Walt Disney Co. v. Powell53 began its interpretation by

relying on the Second Circuit’s Stigwood test in saying that separate “copyrights” are not

necessarily separate “works” unless they can “live their own copyright life.”54 The court

concluded that infringements on Mickey and Minnie Mouse warranted two separate awards of

statutory damages because “Mickey and Minnie are certainly distinct, viable works with separate

economic value and copyright lives of their own.”55

52 See H.R. Rep. No. 94-1476, at 162 (1976); S. Rep. No. 94-473, at 144 (1975) “Subsection (c)(1) [of 17 U.S.C. §

504] makes clear ... that, although they are regarded as independent works for other purposes, “all the parts of a

compilation or derivative work constitute one work” for th[e] purpose [of assessing statutory damages]. Moreover,

although the minimum and maximum amounts are to be multiplied where multiple “works” are involved in the suit,

the same is not true with respect to multiple copyrights, multiple owners, multiple exclusive rights, or multiple

registrations. This point is especially important since, under a scheme of divisible copyright, it is possible to have

the rights of a number of owners of separate “copyrights” in a single “work” infringed by one act of a defendant.” 53 Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990). 54 Walt Disney Co., 897 F.2d at 567 (citing Robert Stigwood Group, Ltd., 530 F.2d 1105). 55 Walt Disney Co., 897 F.2d at 570.

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Then, in 1993, the First Circuit in Gamma Audio & Video, Inc., v. Ean-Chea56 explicitly

disagreed with an issuance test. Additionally, in relying on the Second Circuit’s analysis in Twin

Peaks, and even though the copyrights to the television episodes in this case were registered on a

single registration, the court concluded that the focus should be on whether each expression (or

in this case, television episode) has an independent economic value and is, in itself, viable.57

Since each TV episode was viable on its own58, they were considered separate “works” for the

calculation of statutory damages. The First Circuit also cited 37 C.F.R. § 202.3(b)(3)(A),59 which

is the regulation regarding registering multiple works on a single registration, in saying that

multiple works may be registered in a single form and still qualify as separate works for

awarding statutory damages. This point is particularly relevant because the Second Circuit’s

reasoning only included an analysis of Congress’ intent of the Copyright Act and failed to

consider the other, equally binding, facets of Copyright law; here that was a regulation.

The Eleventh Circuit in MCA Television Ltd. v. Feltner60 also employed an independent

economic value test but relied on different facts than the First Circuit did in Gamma Audio.

Feltner also concerned the damages that should be awarded to episodes of a television show but

the court reasoned that because each episode was produced independently from the other

episodes and each was aired independently from preceding and subsequent episodes, then it has

independent economic value. Additionally, the Eleventh Circuit rejected the defendant’s

argument that each episode does not have independent economic value because “the industry

56 Gamma Audio & Video, Inc., v. Ean-Chea, 11 F.3d 1106, 1116-17 (1st Cir. 1993) (“A distributor's decision to sell

or rent complete sets of a series to video stores in no way indicates that each episode in the series is unable to stand

alone”). 57 Id. 58 11 F.3d at 1117 (“the fact that (1) viewers who rent the tapes from their local video stores may rent as few or as

many tapes as they want, may view one, two, or twenty episodes in a single setting, and may never watch or rent all

of the episodes; and (2) each episode in the ... series was separately produced.”). 59 Gamma Audio & Video, Inc., 11 F.3d at 1117. 60 MCA Television Ltd. v. Feltner, 89 F.3d 766, 768-70 (11th Cir. 1996), cert. denied, 520 U.S. 1117 (1997).

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practice is to enter contracts for television series, not individual episodes of series, and that no

one would purchase and air just one episode of a series.”61

Finally, in 1997, the Ninth Circuit in Columbia Pictures Television v. Krypton Broad. of

Birmingham, Inc.,62 reaffirmed that the test for statutory damages is the independent economic

value test. This case was also about television episodes and the court concluded that the episodes

were not assembled into a collective whole and therefore possessed independent economic value

because “the episodes were broadcast over the course of weeks, months, or even years, and could

be repeated and rearranged at the option of the broadcaster.”63

A district court in the Seventh Circuit also acknowledged the independent economic

value test when the court held that separately copyrighted hand, foot, and head “sculpts” for

vinyl doll constituted a single work, for the purpose of calculating statutory damages from

infringement, because the sculpts were registered as collection, and they only had viable

economic life when used together to form a single doll.64

These cases above demonstrate the formulation of the independent economic value test

and how it applies in a Copyright action. But, none of those cases apply the test to songs in an

album. An appellate case from Puerto Rico discussed the test in relation to a music infringement

action. In 2004, the First Circuit held that each infringed song in infringing albums was a

separate “work” for purposes of award of statutory damages under Copyright Act.65 The heirs of

a Puerto Rican popular songwriter sued two recording companies for copyright infringement of

61 Id.; Note: Feltner also discussed the Twin Peaks case just as Gamma Audio did and it seems like the Twin Peaks

case was either interpreted incorrectly by these two cases or the Twin Peaks case actually is discussing an

independent economic value test rather than an issuance test. 62 Columbia Pictures Television v. Krypton Broad. of Birmingham, Inc., 106 F.3d 284, 295 (9th Cir. 1997), reversed

on other grounds 523 U.S. 340 (1997). 63 Id. at 296. 64 Lee Middleton Original Dolls, Inc. v. Seymour Mann, Inc., E.D.Wis.2004, 299 F.Supp.2d 892, 70 U.S.P.Q.2d

1115. 65 Venegas-Hernandez v. Sonolux Records, 370 F.3d 183, 186 (1st Cir. 2004).

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some of the songwriter's best-selling songs. The [defendant] had published recordings of two of

the copyrighted songs, “Desde Que Te Marchaste” and “No Me Digan Cobarde,” on sixteen

different albums by different artists. The district court’s judgment was based on statutory

damages for sixteen albums that each included at least one of two infringed songs.66 The First

Circuit reversed this and determined that “works” in § 504(c)(1) means “songs” in the context of

this case and not the number of infringing albums created by the defendant and therefore

awarded two awards of damages for each of the two songs infringed.67

After considering and analyzing the history and application of both of the tests employed

by various circuits, the independent economic value test not only makes the most legal sense, but

is also the most practical sense from a policy perspective. The Copyright Office encourages

copyright applicants to register certain multiple works together on the same registration.68 If one

of the facts that courts consider in determining whether or not a song on an album is a single

work is to look at how it is issued or registered, then it would against a copyright owner’s

interest to register multiple songs together in one registration because doing so could potentially

limit the recovery. Further, in considering the changes that were made to the statute from the

Copyright Act of 1909 to the Copyright Act of 1976, Congress’ legislative intent was clear:

deterring infringers from continuing to infringe the copyrighted works as many times as they

want and granting copyright owners the amount of recovery they are rightfully entitled to

(regardless of the manner in which the works were released or registered).69

66 Id. 67 Id. 68 U.S. COPYRIGHT OFFICE, CIRCULAR 56A, COPYRIGHT REGISTRATION OF MUSICAL

COMPOSITIONS AND SOUND RECORDINGS, at 1 (2012) (“Although they are separate works, a musical

composition and a sound recording may be registered together on a single application if ownership of the copyrights

in both is exactly the same.”). 69 See supra Part (I)(A).

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II. A Plaintiff who is a Co-Owner of a Joint Work should be Entitled to 100% of the

Awarded Statutory Damages.

A co-owners in a joint work is entitled to 100% of the damages awarded regardless of his

percent interest in the copyrighted work. First, the case law clearly supports the conclusion that a

single party plaintiff who is a co-owner should be awarded 100% of the statutory damages, and

second, to remedy any potential issues that may arise between co-owners, the best recourse for a

non-joined co-owner to receive awarded damages is an action between the co-owners and not an

action against the third-party infringer.

A. The Case Law Supports the Conclusion that a Plaintiff who is a Co-Owner of

a Joint Work should be Entitled to 100% of the Awarded Statutory

Damages.

The case law supports the conclusion that the plaintiff is entitled to 100% of the awarded

damages incurred from infringement of the copyrighted work. To start, Edward B. Marks Music

Co. v. Jerry Vogel Music Co.,70 is a Second Circuit case from 1944 where the issue was whether

an assignee of a joint owner was a real party in interest with standing to sue a third party for

infringement of a joint work. The court held that the assignee did have standing to sue the third

party and receive damages for the infringement. There is dicta in the case ordering that “the

judgment must be modified to provide that the recovery shall be confined to the plaintiff's own

part; that is to say, to its own actual damages, to its proper share of any statutory damages, and to

its proper share of the profits.”71 There are two ways that this dicta is not persuasive, however.

First, this case was decided in 1944 which preceded the present version of the Copyright

Act. Therefore, it was decided without the provisions in the Copyright Act that define a joint

work as a “unitary whole” and that says authors of a joint work are “coowners” of the

70 Edward B. Marks Music Co. v. Jerry Vogel Music Co., 140 F.2d 268, 269-70 (2d Cir. 1944). 71 Id.

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copyright.72 Additionally, the House Report that accompanied the passage of the Copyright Act

states that coowners in a work are to “be treated generally as tenants in common, with each

coowner having an independent right to use or license the use of a work, subject to a duty of

accounting to the other coowners for any profits.”73 Therefore, the Second Circuit’s statement in

Thomson v. Larson, and later reiterated in Davis v. Blige, that says that a “joint authorship

entitles the coauthors to equal undivided interests in the whole work”74 refutes the Edward B.

Marks Music Co. court’s conclusion that a Plaintiff’s damages “be confined to the plaintiff's own

part” since a co-owner has equal undivided interests in the entirety of the joint work copyright.

Second, the Edward B. Marks Music Co. case doesn’t define what it means by “share.”

For example, consider this different scenario: if a co-author has 3 children and leaves his

ownerships in copyrights to his estate, then each of those 3 kids would be entitled to a “share” of

the damages. Accordingly, the word “share” doesn’t necessarily clarify the amount of damages

that a single co-owner would be entitled to.

Next, the Fifth Circuit in In re Isbell Records75 discussed the Second Circuit’s decision in

Edward B. Marks Music Co., but distinguished the case “because it dealt with the nonjoinder of a

copyright co-owner and did not involve a situation where there was evidence from which the

jury could find that the plaintiff was administrator for all of the royalties.”76 Additionally, In re

Isbell Records also cited a Southern District of New York case from 200377 that upheld damage

72 17 USC § 101. 73 H.R.Rep. No. 94–1476, at 121 (1976). 74 Thomson v. Larson, 147 F.3d 195, 199 (2d Cir.1998) (emphasis added); Davis v. Blige, 505 F.3d 90, 99 (2d Cir.

2007) (Holding a co-owner may bring suit for copyright infringement without joining any other co-owner). 75 In re Isbell Records, 774 F.3d 859 (5th Cir. 2014). 76 Id. 77 Copyright.net Music Publ'g. LLC v. MP3.com, 256 F.Supp.2d 214, 218 (S.D.N.Y. 2003).

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awards that contained more than the plaintiff's share; ruling that the proper resolution was for the

co-owner to bring an action against the prevailing plaintiff for its share.78

Finally, the Manno v. Tennessee Production Center, Inc.,79 is one outlier case that

concluded that the plaintiff’s statutory damages should be limited to 50% because Manno had a

one-half interest in the copyrighted work. However, the sole case that the Manno court used to

support that conclusion was Community for Creative Non–Violence v. Reid (“CCNV”)80 which

declared that “[i]n the absence of an agreement specifying otherwise, any profits earned are to be

divided equally” between joint owners in a copyrighted work. CCNV actually goes against the

conclusion that the Manno court is trying to establish by citing to it because CCNV further states

that “[j]oint authors co-owning copyright in a work are deemed to be tenants in common, with

each having an independent right to use or license the copyright, subject only to a duty to

account to the other co-owner for any profits earned thereby.”81 Therefore, a single co-owner is

only obliged to account to the other joint owners of the profits made, after they are made.82

Further, the CCNV case arose out of a dispute between joint co-owners of a work and not

between a joint owner and a third-party infringer like the dispute in Manno and therefore reliance

on CCNV by the Manno court was erroneous.83 There is nothing in CCNV or the Copyright Act

that declares that the court should determine a plaintiff’s share of the joint work in an action

78 In re Isbell Records, 774 F.3d 859 (5th Cir. 2014). 79 Manno v. Tennessee Production Center, Inc., 657 F. Supp.2d 425 (S.D.N.Y. 2009). 80 Cmty. for Creative Non–Violence v. Reid, 846 F.2d 1485, 1498 (D.C.Cir.1988) (emphasis added); This case was

about whether the work made for hire doctrine was applicable between the plaintiff and the defendant or if they are

instead considered joint owners of a joint work. 81 Cmty. for Creative Non–Violence, 846 F.2d at 1498 (internal quotations omitted) (emphasis added). 82 See Thomson v. Larson, 147 F.3d 195, 199 (2d Cir.1998) (“Joint authorship entitles the coauthors to equal

undivided interests in the whole work—in other words, each joint author has the right to use or to license the work

as he or she wishes, subject only to the obligation to account to the other joint owner for any profits that are made.”). 83 See Manno, 657 F. Supp.2d at 427-28.

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between a single co-owner and a third-party infringer and then award only its share in statutory

damages.84

B. For a Non-Joined Co-Owner to Receive Statutory Damages Awarded from

an Infringement Suit, the Best Recourse is for the Co-Owner to bring a

Separate Action Against the Prevailing Plaintiff.

First, the Copyright Act states that “[t]he authors of a joint work are coowners of

copyright in the work.”85 And it defines a joint work as a “work prepared by two or more authors

with the intention that their contributions be merged into inseparable or interdependent parts of a

unitary whole.”86 Therefore, two or more joint owners own an undivided interest in a single

copyright which supports the argument that the damages received as a result of an infringement

should not then be divided.

First, the principles of “tenants in common” in real property lend support to this

argument. Real property “tenants in common” principles are governed by state law but at least

one jurisdiction holds that “[t]enants in common may each unilaterally alienate their shares

through sale or gift or place encumbrances upon these shares.”87 Additionally, “tenants in

common not joined are not indispensable parties, for while they may be interested in the

outcome, their interests are not ‘joint’ and would not be affected by the judgment herein; nor

would their absence prevent complete justice as between the parties who are involved.”88

Additionally, Copyright Act § 501 says that “a court may require [a joint] owner to serve

written notice of the action with a copy of the complaint upon any person shown… to have or

84 See 17 U.S.C. § 501 (“…The court may require the joinder, and shall permit the intervention, of any person

having or claiming an interest in the copyright.”); see also Greene v. Ablon, 794 F.3d 133 (1st Cir. 2015) (Defining

what “profits” means and when it is required for joint owner to share with the other joint owner). 85 17 U.S.C. § 201(a). 86 17 U.S.C. § 101. 87 In re Miller, 853 F.3d 508, 512 (9th Cir. 2017). 88 Chidester v. City of Newark, 162 F.2d 598, 601 (3d Cir. 1947).

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claim an interest in the copyright. The court may require the joinder, and shall permit the

intervention, of any person having or claiming an interest in the copyright.”89 Importantly, the

Copyright Act does not include a requirement on the court to join any other co-owners, but rather

includes it to give the courts permission to do so if they wish. As a Second Circuit court held in

Thomson v. Larson, “[j]oint authorship entitles the coauthors to equal undivided interests in the

whole work—in other words, each joint author has the right to use or to license the work as he or

she wishes, subject only to the obligation to account to the other joint owner for any profits that

are made.”90 Therefore, if statutory damages can even be considered “profits,” a co-owner has

the obligation to account to the other co-owners for any profits that are made and should not be

left to the court to determine any shares that should be awarded to a single co-owner.

Further, it is likely against public policy to award only a share of damages to a prevailing

plaintiff for infringement of a joint work. If only a share of the damages are awarded to the

plaintiff, then a co-owner who was not joined in the original suit must sue the infringers again to

receive its share of damages. Additionally, for example, if a court determines that the plaintiff is

entitled to 70% of the damages then the co-owner can later only recover 30% of the damages in a

separate suit against the same infringer and would not be able to dispute the court’s original

determination of 70% in the first suit. This also means that the co-owner must reestablish the

award he or she is entitled to and it may be less than was awarded in the first suit. It is more

economically viable for a prevailing plaintiff to receive 100% of the awarded damages and either

disburse the appropriate amount to the other co-owners, or seek redress through a later suit

89 17 U.S.C. § 501(b) (emphasis added). 90 147 F.3d 195, 199 (2d Cir.1998) (emphasis added); this quotation was also cited in a parenthetical in a more

recent case, Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007).

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between the co-owners where a court can objectively determine the share of damages entitled to

each.91

CONCLUSION

In conclusion, there is still a dispute in the Copyright world with respect to what “work”

means in 17 USC § 504(c) but the test that is most supported by the legislative history is the

independent economic value test. The Supreme Court did issue an opinion in regards to the

statutory damages provision, but the issue in that case was limited to whether the determination

of statutory damages can be held in front of a jury.92 Additionally, a court resolving a dispute

between a co-owner of a joint work and a third-party infringer should not determine the

percentage of damages the plaintiff is entitled to and a single co-owner should be entitled to

100% of the awarded damages.

91 See, e.g., Edgenet, Inc. v. GS1 AIBSL, No. 09–CV–65, 2010 WL 55843, at *5 (E.D.Wis. Jan. 5, 2010) (“In a case

where infringement damages are awarded to only one of two co-owners of a copyright, redress is properly sought

through a suit between the co-owners and not through further litigation against the defendant.”) (citation omitted);

Copyright.net Music Publ'g. LLC v. MP3.com, 256 F.Supp.2d 214, 218 (S.D.N.Y. 2003) (upholding damage awards

that contained more than the plaintiff's share, ruling that the proper resolution was for the co-owner to bring an

action against the prevailing plaintiff for its share). 92 Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340, 344 (1998).