The Second Circuit issued a remarkable decision on termination rights under Sections 203 and 304(c) of the Copyright Act that seemingly, whether knowingly or otherwise, limits the Act’s extraterritorial reach. Ennio Morricone Music Inc. v. Bilio Music Group Ltd., Second Circuit, No 17-3595-cv, decided August 21, 2019 (“Morricone II”). The foregoing provisions of the Copyright Act allow authors to terminate grants after a certain stated period of years, generally after 35 years for grants made by an author. This termination right is unavailable to works-made-for-hire. Identifying the “author” is critical. If “for hire,” the “author” is the employer or commissioning party, and the individual creator, or his or her statutory heirs, may not terminate.

Just as remarkable as the decision is that it flows from the actions of an elder statesman from the ranks of film composers, the world renowned Ennio Morricone, the 90 year-old Italian composer of over 400 film and television scores, including the iconic theme from the Clint Eastwood spaghetti western “The Good, The Bad and The Ugly.” He has received numerous awards and honors, including the Academy Honorary Award in 2007. At the 2016 Academy Awards, Morricone was the then oldest recipient of a competitive Oscar for his score for Quentin Tarantino’s “The Hateful Eight.”

Morricone brought an action for a declaratory judgment that, as the “author” of certain film scores, he was entitled to terminate his prior grants under Section 203. The lower court, in determining authorship, appropriately chose to apply the laws of Italy, the country in which the work was created and first published. Ennio Morricone Music, Inc. v. Bixio Music Group Ltd., 124 U.S.P.Q. 2d 1541 (S.D.N.Y. 2017) (“Morricone I”). However, even though not expressly providing for “work-for-hire” authorship, Morricone I ruled that the Italian laws on commissioned works were sufficiently analogous to U.S. work-for-hire laws, so that the commissioning party, the music publisher, was the legal author of a work-made-for-hire, thus negating Morricone’s claimed right of termination.

By way of background, the United States is the only country that applies a work-for-hire doctrine under which an employer or commissioning party can expressly acquire the legal status of “author”—with legal privileges and consequences that flow from that status. Most countries instead apply special provisions to works created by employees, commissioned works, and collaborative works vesting some or all of the economic rights under copyright to the person or organization that arranges for a work’s creation. None of these laws expressly identifies the “author” as anyone but the individual creator.

Morricone I resolved this difficult question in favor of the commissioning party. On appeal, Morricone II reversed, noting, among other things, that Italian law (as with the laws of many other countries) recognizes the composer of the music as a “joint-author” of the motion picture along with the writer and director. Morricone II also noted that Italian law, unlike U.S. law, does not provide the protected requirement of a “work-for-hire” writing signed by both parties, so that Morricone’s transfer of “all rights” did not foreclose termination under Section 203. Thus, finding Morricone to be the “author” under Italian law, Morricone II held that the contractual assignment of rights was subject to termination under Section 203.

It should be noted that Morricone II appears to be in direct conflict with determinations made on foreign authorship in Alameda Films S.A. de C.V. v. Authors Rights Restoration Corp., 331 F. 3d 472 (5th Cir. 2003), and Laparade v. Ivanova, 387 F. 3d 1099 (9th Cir. 2004). These cases involved the vesting of certain restored rights in foreign works, under Section 104A, in the “author” as determined by the source country, in this case Mexico. In other words, identifying the “author” under foreign law was still the controlling question. Both the Fifth and Ninth Circuits, reviewing the provisions in Mexican law similar to those in Italy, found that the film producers could be and were the “authors” of the motion pictures in question, so that the restored rights vested in the producers, as authors, rather than the individual creators.