Bensen on Latin Am. Music v. Archdiocese of San Juan, 499 F.3d 32 (1st Cir. 2007)
Co-author of Milgrim on Licensing and Milgrim on Trade Secrets and a Visiting Assistant Professor of Law at Hofstra University School of Law
In Latin Am. Music Co. v. Archdiocese of San Juan, the Latin American Music Company (LAMCO) and the Asociacion de Compositores y Editores de Musica Latino Americana (ACEMLA) accused the Archdiocese of San Juan of the Roman Catholic and Apostolic Church of infringing music copyrights. The Archdiocese filed counterclaims against LAMCO/ACEMLA and third party claims against, among others, the American Society of Composers, Authors and Publishers (ASCAP). In analyzing the case, Eric Bensen, co-author of Milgrim on Licensing and Milgrim on Trade Secrets and an attorney with Paul, Hastings, Janofsky & Walker LLP in New York, discusses, among other things, performing rights, standing to sue for copyright infringement, and recordation of transfers of copyright ownership. He writes:
With respect to the . . . song, “Ojos Chinos,” the [district] court held that LAMCO/ACEMLA had a nonexclusive license, which might entitle it to payment from broadcasters, but did not support standing to maintain a copyright right claim. The court also held that although LAMCO/ACEMLA recorded its agreement with the composer’s heirs respecting “Ojos Chinos” before a conflicting transfer was recorded by an ASCAP member, the recorded documents only identified “Ojos Chinos” in a list of 29 other songs and did not identify the song’s copyright registration number. Because the recordation documents failed to identify the copyrighted work with specificity as required under the Copyright Act, the recordation did not provide constructive notice of the license. The district court granted ASCAP’s motion dismissing LAMCO/ACEMLA’s infringement claims on all five of the songs that the parties agreed to have the court focus on.
. . . .
The transferee of an interest in a copyright can protect its interest against a later transfer by the copyright owner by recording the transfer with the Copyright Office. 17 U.S.C. § 205. Proper recordation of the interest will serve as constructive notice to subsequent transferees. 17 U.S.C. § 205(c). In the absence of recordation, the later transfer, if recorded, will prevail if taken in good faith, for consideration and without notice of the earlier transfer. 17 U.S.C. § 205(d). A nonexclusive license, whether recorded or not, will prevail against conflicting transfer if it is in writing and signed by the owner of the rights and (i) it was taken before the execution of the conflicting transfer or (ii) taken in good faith before the recordation of the conflicting transfer and without notice of it. 17 U.S.C. § 205(e).
. . . .
On appeal, LAMCO/ACEMLA challenged the district court’s findings that its recordation of its license for “Ojos Chinos” failed to meet the specificity requirements of § 205(c). It did not, however, argue that a nonexclusive licensee had standing to sue for infringement. In a reply brief, LAMCO/ACEMLA argued that it had received an exclusive license from the composer’s heirs, but, as the issue was first raised in the reply brief, the court refused to consider it. In the court’s view the undisputed deficiency in standing trumped the recordation issue. The court had little trouble concluding that the lower court was correct in holding that a nonexclusive copyright licensee has no standing to sue for infringement. Accordingly, it affirmed the summary judgment as to “Ojos Chinos.”