WHAT ARE WE TO DO WITH DEPOSIT COPIES?

• Date: 22 June 2019
• Author: Zurfluh, Sadie

Introduction I. OVERVIEW OF THE DEPOSIT COPY REQUIREMENT UNDER THE 1909 ACT II. ARE MUSICAL WORKS LIMITED to a DEPOSIT COPY or CAN DEPOSIT COPIES EVIDENT OF MUSICAL WORKS INCLUDE OTHER THINGS? III. LOOKING FORWARD AFTER SKIDMORE & ANALYZING ABUSE OF DISCRETION CONCLUSION Introduction

Copyright protects written works. (1) However, the 1909 Copyright Act (the "1909 Act") only protected published written works, and sometimes, if the first written version of a work was registered before it was published, it was an incomplete deposit copy. (2) Recently, the Ninth Circuit adopted the view that the protected work of authorship, in certain cases, should be limited to the work expressed in the deposit copy and not in any later publication. (3) This comment argues, both as a doctrinal matter and practical matter, that this view is mistaken.

In 1831, musical compositions were added to copyright protection in order to give "the composer an adequate return for the value of his composition...." (4) Under the 1909 Act, in order to register an unpublished work, one complete copy of the work in a legible notation had to be sent to the Copyright Office. (5)

The 1909 Act further specified that phonorecords were not accepted as deposit copies. (6) In 1976, the Copyright Act underwent another major revision that eliminated the publication requirement and, as a result, also eliminated the need to use a deposit copy as a substitute for publication. (7)

One of the problems courts are faced with today is determining what happens with unpublished works registered under the 1909 Act: can only the sheet music filed with the deposit copy come into evidence when comparing two works as substantially similar? In 2015, the district court in Williams v. Gaye addressed the issue; however, the Ninth Circuit declined to decide the issue on appeal. (8) Later in 2018, in Skidmore v. Zeppelin ("Skidmore"), the Ninth Circuit concluded that when dealing with unpublished works under the 1909 Act, the deposit copy defines the scope of the copyright. (9) Part I of this comment is an overview of the deposit copy requirement under the 1909 Act. Part II will address what constitutes a deposit copy. Part III will address the repercussions of Skidmore and how the Ninth Circuit was incorrect in holding that the scope of a copyright comes simply from the deposit copy rather than the entire musical work.

1. Overview of the Deposit Copy Requirement Under the 1909 Act

   As the times have changed, copyright law has adapted. In 1790, maps, charts, and books were protected works. (10) In 1802, prints were added; in 1831, musical compositions were added; in 1856, dramatic works were added; in 1865, photographs were added; and in 1870, works of art were added. (11) Furthermore, in 1831, the term of protection was extended, and in 1870, the administration of registrations for copyright was moved to the Library of Congress Copyright Office. (12) In 1909, a major revision took place, expanding copyright protections "to include all works of authorship...." (13) The 1909 Act allowed a work to be protected either through registration and submission of a deposit copy or through publication. (14) Unpublished works were not protected under the 1909 Act. (15) Only state common law protected unpublished works.16 However, a copyright owner could constructively publish the work by filing for a registration before actual publication, (17) which, as you will see, is what happened in the cases below. (18)

   Phonorecords were not accepted as forms of deposit copies of the underlying works until the 1976 Copyright Act (the "1976 Act"). (19) A phonorecord is defined by the Copyright Office as

   [a] material object in which sounds are fixed and from which sounds can be perceived, reproduced or otherwise communicated either directly or with the aid of a machine or device. A phonorecord may include a cassette tape, an LP vinyl disc, a compact disc, or other means of fixing sound. A phonorecord does not include those sounds accompanying a motion picture or other audiovisual work. (20) In 1976, the Copyright Act underwent another major revision; (21) this revision remains the most current Copyright Act. The 1976 Act extended the term of protection and discussed copyright scope and subject matter of works covered, exclusive rights, copyright term, copyright notice, copyright registration, copyright infringement, fair use, and defenses and remedies to infringement. (22) The 1976 Act, differing from the 1909 Act, stated that a complete copy or a phonorecord must be sent with the application for an unpublished work. (23) With the 1976 Act, Congress intended the standards of originality and creativity, that had been developed by the courts under the 1909 Act, to remain the same under the new law. (24)

   "[C]opyright law only protects an author's expression," not facts and ideas within a work. (25) In order to prove copyright infringement, two elements must be met: (1) ownership of a valid copyright; and (2) copying of constituent elements of the work that are original. (26) A plaintiff can establish copyright infringement by showing either that a defendant had access to the work or that the two works are substantially similar in idea and expression of the idea. (27)

2. Are musical works Limited to a deposit Copy or Can deposit Copies Evident of Musical Works Include Other Things?

   What the deposit copy was limited to has changed as the Copyright Act has changed. In Williams v. Gaye, the district court held that the 1909 Act protected only the sheet music that was deposited with the Copyright Office and not the sound recording itself. (28) In 1976, Marvin Gaye recorded the song Got to Give It Up and deposited six pages of handwritten sheet music with the Copyright Office. (29) He published the work by filing for a registration before actual publication, (30) which is known as constructive publication. (31) Gaye did not write or read sheet music. (32) Rather, he hired an unidentified transcriber to notate the sheet music. (33) Gaye's song was governed by the 1909 Act. (34)

   In 2012, Pharrell Williams and Robin Thicke wrote Blurred Lines, which, in 2013, became the best-selling single in the world. (35) The Gaye family claimed that the song infringed on Got to Give It Up, and Williams and Thicke sued for a declaratory judgment of non-infringement. (36) The district court held that, since only the sheet music was deposited with the Copyright Office, only the sheet music was protected. (37) The Gayes hired Dr. Ingrid Monson, the Quincy Jones Professor of African American Music at Harvard University, and musicologist Judith Finell, who argued that "a deposit copy is 'not intended to represent fully the composition. At best, it is a skeletal representation or sketch, and usually shows only the most basic vocal melodies, typically only a single iteration of the beginning sections, some beginning lyrics, and chord indications.'" (38) Further, Finell stated that "lead sheets were notated after the composition was completed and recorded, in order to fulfill music copyright registration requirements. They were often notated by music copyists employed by the music publishers rather than by the artists themselves." (39) The Gayes argued that the scope of a deposit copy should be expanded to include more than just the deposit copy itself and include the actual musical work. (40) The district court held that the sheet music deposited with the Copyright Office is what is protected. (41) The case went up on appeal, (42) but the Ninth Circuit declined to address the issue of what constitutes a protected work. (43)

   In 2018, in Skidmore, the plaintiff, Michael Skidmore, brought a copyright infringement suit on behalf of the estate of one of the band members of Spirit. (44) Spirit had written the song Taurus in 1966, (45) and here, he constructively published (46) the work by filing his sheet music with the Copyright Office in 1967. (47) Led Zeppelin crossed paths with Spirit on several occasions in the 1960s and 1970s. (48) The Zeppelin band had performed covers of other Spirit songs. (49) Spirit and Zeppelin even performed at the same concert where Spirit played Taurus. (50) Skidmore filed suit alleging copyright infringement. (51) The court held that "[b]ecause the 1909 Act governed the scope of the copyright ... obtained in 'Taurus' ... the protectable copyright was the musical composition transcribed in the deposit copy of 'Taurus' and not the sound recordings." (52)

   The Ninth Circuit, in Skidmore, addressed the following question: what defines the scope of a protectable copyright? (53) It held that a deposit copy, rather than a sound recording, defines the scope of a protectable copyright. (54) The court stated that "the structure of the 1909 Act demonstrates that the deposit copy encompasses the scope of the copyright for unpublished works, as the deposit copy must be filed not only to register the copyright, but for the copyright to even exist." (55) The 1909 Act makes a copyright completely dependent on a deposit copy. (56) Thus, it follows that the deposit copy defines the scope of the copyright. The court further stated that "[i]t was not until the 1976 Act that common law copyright was federalized and copyright attached at the creation of the work." (57) Therefore, the scope of a copyright for any work created prior to the 1976 Act is defined only by the deposit copy.

   The Ninth Circuit says the deposit copy defines the scope of the copyright. (58) This is the holding lower courts are left with to apply. Skidmore, in his brief to the court, stated that a deposit copy is purely archival in nature under the 1909 Act. (59) Further, he argued "that the express purpose of the 1909 Act was to overturn White-Smith and extend copyright protection beyond sheet music," (60) relying on section 1(e) from the 1909 Act, which protects "any system of notation or any form of record in which the thought of an author may...