In Davis v. Blige, the Second Circuit refused to give effect to a retroactive copyright license, granted by one of two co-authors, which would have extinguished the other co-author’s accrued infringement claim against the licensee. In this case of first impression, the court held that retroactive copyright licenses are unenforceable. Discussing Davis and its implications, Eric E. Bensen begins:
Davis arose from a dispute over the authorship of two songs (the “Disputed Works”) on a successful 2001 album by performer Mary J. Blige, a.k.a. the “Queen of Hip-Hop Soul,” entitled “No More Drama” (the “Album”). Blige, Bruce Miller and others were given the writing credits for the Disputed Works. Sharice Davis, the plaintiff, claimed to be a co-author of the two works and brought suit for copyright infringement.
Davis claimed to have co-authored the two disputed works in 1998 with Bruce Chambliss, who was Miller’s father and Blige’s step father, and to have performed one of the songs for Blige. Subsequent to that performance, according to Davis, Miller approached her seeking to buy several of her songs, including the one performed for Blige. Davis declined the offer.
Defendants denied that plaintiff was the author of the two disputed works. However, the day before the deposition of Chambliss, who was not a party to the action, Chambliss and Miller entered into two written agreements, allegedly to memorialize earlier oral agreements, under which Chambliss transferred his rights in the disputed works to Miller retroactively to the dates of their creation (the “Agreements”) for $1 each. At the close of discovery, defendants moved for summary judgment on the grounds that as a result of the Agreements, Miller became a co-owner of the disputed works, and thus, could not be sued by Davis for infringement of the copyrights on the works.
The [United States District Court for the Southern District of New York] ruled that Chambliss could cure past infringement through the grant of a retroactive license and granted defendant’s motion for summary judgment.