Eric E. Bensen on Compulsory License Does Not Give a Karaoke Machine Manufacturer the Right to Display Song Lyrics in Real Time with the Licensed Song Recordings: Leadsinger, Inc. v. BMG Music Publg, 512 F.3d 522 (9th Cir. 2008)
Co-author of Milgrim on Licensing and Milgrim on Trade Secrets and a Visiting Assistant Professor of Law at Hofstra University School of Law
Leadsinger manufactured a microphone that televised lyrics to songs and enabled consumers to sing along with the lyrics. BMG issued Leadsinger compulsory mechanical licenses to its musical compositions under § 115 of the Copyright Act but demanded lyric reprint and synchronization fees in connection with Leadsinger’s use of the licensed songs. In Leadsinger, Inc. v. BMG Music Publg., the Ninth Circuit entered judgment for BMG, holding that additional licenses were required to avoid infringement. In this commentary, Eric E. Bensen analyzes Leadsinger and discusses compulsory licenses under § 115 of the Copyright Act. He writes:
Among the exclusive rights granted under a copyright is the right to reproduce the work in copies or phonorecords. Where the copyrighted work is a nondramatic musical work, i.e., a musical work that is not integral to a larger production (such as theatrical musical comedy), that exclusive right is circumscribed by § 115 of the Copyright Act, which provides that a third party who meets certain requirements is entitled to a compulsory license, sometimes called a mechanical license, to copy the work. Compulsory licensing was originally made part of the Copyright Act of 1909 to permit multiple phonographic recordings of a song to obviate the feared emergence of a music monopoly.
The compulsory license extends only to the creation and distribution of phonorecords of the musical work, its does not give the holder the right to make copies of licensors sound recordings of the work because a sound recording of a musical work is distinct from the musical work itself. Thus, to exercise a compulsory license, one must arrange for an original performance and recording of the musical work that is subject to the license (the compulsory licensee generally becomes the owner of the copyright in the resulting sound recording). Note that the license to perform the work for the purpose of creating a sound recording does not include a right to publicly perform the work. To make copies of anothers sound recording, one must obtain a traditional license under the copyright.
. . . .
In the Ninth Circuits view, a device on which sounds and visual images are fixed did not necessarily fall outside the definition of a phonorecord. An audiovisual work, however, expressly falls outside the definition. As the Leadsinger device met the definition of an audiovisual work, in that it presented a series related images, the song lyrics, sequentially matched to the accompanying music and intrinsically intended to be shown by the use of a machine, it could not be considered a phonorecord. Accordingly, the court held that in addition to a compulsory license, Leadsinger needed additional licenses to reprint the song lyrics and display the lyrics in timed relation to the recorded music.
(citations omitted)