Miley Cyrus has failed to get a song-theft lawsuit filed over her hit ‘Flowers’ dismissed. It’s an interesting ruling, because the arguments Cyrus and her ‘Flowers’ co-writers used in their attempt to get the case thrown out could have had a big impact on companies that buy shares of co-owned copyrights.
Indeed, as the judge who rejected those arguments pointed out, if you followed the logic in Cyrus’s motion for dismissal, if all the co-writers of a song assigned their share of the copyright to another party, you might end up in a situation where nobody could enforce that copyright in court. The argument presented by Cyrus and her co-writers was rather complicated, but the judge’s rebuttal of it is pretty straightforward.
The ‘Flowers’ songwriting team are accused of ripping off Bruno Mars’s ‘When I Was Your Man’. The song-theft lawsuit was filed by Tempo Music Investments, which acquired a portion of the ‘When I Was Your Man’ copyright via its 2020 purchase of the publishing catalogue of one of the song’s co-writers, Philip Lawrence.
In their motion for dismissal, the writers - rather than getting into any of the customary debates around song-theft - simply argued that Tempo had no right to bring its legal action for song-theft, despite owning a slice of the copyright in Mars’s song.
In order to sue, argued the writers, Tempo must show that its ‘exclusive rights’ in the song have been infringed. However, because Lawrence was not the exclusive owner of the song, he couldn’t assign exclusive rights to Tempo when they bought his catalogue, meaning that Tempo had no ‘exclusive rights’ to enforce in relation to ‘When I Was Your Man’.
This all hinges on how US copyright law deals with co-owned works, and the fact each co-owner can unilaterally license the entire work, but not on an exclusive basis.
Those rules - and the way they have been applied in recent copyright cases - were employed by the ‘Flowers’ team to argue that, while Lawrence originally had exclusive rights in the song he co-wrote, when he sold his share to Tempo, the investment company did not. So the company can earn from the song, but not enforce the copyright in court.
Despite the songwriters citing some recent legal precedent which they believed backed up their argument, Judge Dean D Pregerson rejected their claim, concluding that the writers had confused the notion of ‘exclusive rights’ with the notion of ‘exclusive ownership’.
He also noted that the logical outcome of the writers’ argument would be that companies buying shares of co-owned works wouldn’t be able to enforce those rights in court, which would make acquiring those rights much less attractive.
The limitation on copyright ownership argued for by the writers, he writes in his judgement, “would diminish the value of jointly owned copyrights, because buyers would be less interested in purchasing a copyright that they cannot enforce”.
That would also impact on writers too, because the copyrights in co-owned works would become less valuable, which, Pregerson says, would “disincentivise co‐authorship and collaboration in works”.
The judge also notes another bizarre potential outcome of that limitation. If every co-writer on a song separately sold their share of the copyright to different entities, and each of the buyers wasn’t able to enforce their rights, then the entire copyright would become unenforceable.
“The original co‐owners would have signed over any and all rights leaving them without an ownership interest”, Pregerson writes, “and the new co‐owners would be unable to enforce the copyright because they were not granted an ‘exclusive right’ as the other co‐owner(s) had use of it”.
To understand how Cyrus et al constructed their argument, you need to understand various principles of American copyright law.
In the US, like other countries, copyright law provides copyright owners with certain exclusive rights over their work, including the right to reproduce, distribute, adapt and so on.
If third parties want to do any of those things with a copyright protected work, they need permission - so a licence - from the copyright owner or owners. Anyone who reproduces, distributes or adapts a work without licence can be sued for copyright infringement.
Copyright law also provides various rules around ownership. As Pregerson states in his judgement, “the Copyright Act expressly provides for the divisibility and alienability of copyright ownership”. That means copyrights can be co-owned by multiple parties, and copyrights can be transferred from one party to another, ie they can be sold.
One way in which US copyright law differs from many other countries is that, where a copyright is co-owned, any one co-owner can issue a non-exclusive licence to a third party allowing them to use the work. The other co-owners don’t need to be involved providing they get a share of any money paid by the licensee.
However, no one co-owner can unilaterally issue an exclusive licence to a third party, because that would restrict the rights of the other co-owners without their explicit consent.
So, for example, a co-owner could unilaterally sell a licence to a film producer allowing them to use a song in a movie on a non-exclusive basis, providing the licence fee was shared with the other co-owners.
However, they couldn’t unilaterally grant the producer an exclusive licence which would prevent the other co-owners from doing their own licensing deals with other movie producers, because they are not the exclusive owner of the song copyright.
This principle is central to the argument presented by Cyrus et al.
The argument goes like this: because one co-owner can’t unilaterally issue an exclusive licence, they also can’t unilaterally assign their exclusive rights, which means Tempo didn’t acquire any exclusive rights in ‘When I Was Your Man’ via its deal with Lawrence.
“The heart of songwriter defendants’ arguments is that a co‐owner cannot transfer an exclusive right because a co‐owner is not the exclusive owner of the rights”, Pregerson explains. However, “this is incorrect”, because “ownership of ‘exclusive rights’ is not to be conflated with ‘exclusive ownership’ of rights”.
“The ‘exclusive rights’ are what is owned collectively by the co‐owners”, he continues. “Each co‐owner of a copyright owns an interest in the exclusive rights that make up a copyright. These exclusive rights are exclusive to the co‐owners collectively as against the rest of the world”.
“The Copyright Act requires an ownership interest in an exclusive right for standing to sue”, he adds, “not exclusive ownership of the copyright rights”.
Although the argument presented by Cyrus seemed like a slightly odd interpretation of US copyright rules - especially given the logical outcomes of their argument as discussed by Pregerson - the writers did have legal precedent to back up their claim.
That included a 2020 case affirmed by the Ninth Circuit appeals court in which a licensing company sued a school for making adaptations of songs it controlled without getting a licence.
Although the licensing company, Tresóna, had deals with the relevant publishers to license those works in certain scenarios, the court ruled that it couldn’t sue in relation to works where its publisher partner only owned a portion of the copyright.
However, Pregerson distinguishes this case from the Tresóna case, because the earlier case didn’t deal with the assignment of copyright, and whether or not the exclusive rights move with the assignment. And, to be clear, the judge concludes, they do.
He writes, “When a co‐owner transfers his or her interest, which the co‐owner need not obtain consent from the other co‐owners to do, the transferee stands in the shoes of the transferor, making the transferee a co‐owner in the copyright”.
In this case, “Lawrence’s interest was a co‐ownership interest in the exclusive rights of the copyright - by transferring all of that interest, Tempo now steps into Lawrence’s shoes and is a co‐owner of the exclusive rights of the copyright”.
Therefore, because “Lawrence as a co‐owner could sue for infringement, Tempo as co‐owner, in lieu of Lawrence, can sue for infringement without joining the other co‐owners of the copyright”.
Tempo is also suing the publishers of ‘Flowers’, but they weren’t involved in the motion for dismissal. You suspect they’ll be secretly pleased with Pregerson’s ruling, given they are all in the business of buying copyrights and won’t want the rights they acquire limited in any way.
Presumably they, and the writers, will now turn to the usual arguments against song-theft claims, that the two songs simply share the same musical building blocks, etc etc etc.