Indian Company Fails to Establish Standing Against U.S. Rapper Who Sampled Film Song

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• Case Summary: An Indian recording company does not have standing to bring a copyright infringement claim against an American hip-hop artist that sampled a song from a classic 1969 Bollywood film.

• Key Takeaway: The agreement on which the plaintiff bases its claim of copyright ownership granted an exclusive right to record and distribute the work only until January 1969. Once that right was no longer exclusive and the original copyright owner could license the right to third parties, the plaintiff could no longer claim standing as a copyright owner.

A producer of Hindi-language musical recordings was unable to sustain a copyright infringement claim against a hip-hop artist for sampling a 1960s Bollywood film song because the agreement that formed the basis of the record company's copyright ownership claim conferred only a two-year exclusive license to distribute the recording that expired in 1969, the U.S. Court of Appeals for the 11th Circuit ruled March 25 (Saregama India Ltd. v. Mosley, 11th Cir., No. 10-10626, 3/25/11).

Affirming summary judgment in favor of the defendants, the court denied a subsidiary of the Indian conglomerate RPG Enterprises the right to pursue a copyright claim in a recording whose history involves some of India's biggest film and music stars of the 1960s.

Record Company's Origins in 19th Century.

In 1820, Ramdutt Goenka left his home in Rajasthan, India, and moved to Calcutta, where he established a trading company that quickly became a multi-industry conglomerate. In 1901, Electrical and Musical Industries Ltd. of London (later known as EMI), established a branch in India called the Gramophone Company of India Ltd., through which it marketed recordings of Indian music under the “HMV: His Master's Voice” label. In 1979, a Goenka scion, Rama Prasad Goenka, established RPG Enterprises, which began acquiring a range of businesses, including, in 1984, the Gramophone Co., whose name was later changed to Saregama India Ltd.

The musical work “Baghon Mein Bahar Hai” (meaning “It's Springtime in the Gardens”), was featured in the 1969 Hindi-language Indian musical film Aradhana (”Worship”), about Vandana, a young woman (played by Sharmila Tagore) who is forced to give up her child for adoption when her husband, an air force pilot, is killed in a plane crash before they can make their secret marriage known to their families. Vandana takes a job as her own son's nanny and later takes the blame for a murder. In the movie, Indian film star Rajesh Khanna plays both Vandana's husband and her son, Suraj, as an adult.

“Baghon Mein Bahar Hai”--also transliterated in other ways, such as “Baago Mein Bahaar Hain”--is a romantic duet, which was performed by recording artists Mohammed Rafi and Lata Mangeshkar. The song was featured in a sequence illustrating the courtship ofSuraj and Renu, the daughter of a guard at the prison where Vandana is incarcerated. In a repeated hook of the song, Mangeshkar sings the phrase “na na na, na na na, na na na” (“no no no …”) while coyly resisting the protagonist's advances.

Aradhana was produced by Shakti Films. In 1967, Shakti Films entered into an agreement with the Gramophone Co., providing that for two years, the Gramophone Co. would be the exclusive distributor of music featured in the soundtracks of Shakti film productions.

Jayceon Terrell Taylor is an American hip-hop artist who since 2002 has been performing under the stage names “The Game” and “Game.” In 2005, he released his debut album, The Documentary, which included a track, “Put You on the Game,” produced by rap artist Timothy Zachery Mosley, known as “Timbaland.” The recording incorporated a one-second-long sample from “Baghon Mein Bahar Hai,”--Mangeshkar's “na na na” line--which repeated in the background.

Saregama claimed ownership of the copyright in “Baghon Mein Bahar Hai” based on the 1967 agreement between Shakti Films and the Gramophone Co., it and sued the Game, Timbaland, and several record companies involved in the recording and release of “Put You on the Game,” alleging copyright infringement. All parties moved for summary judgment.

Judge Patricia A. Seitz of the U.S. District Court for the Southern District of Florida ruled that Saregama did not hold a valid copyright in the work, and she granted summary judgment in the defendants' favor.

Ownership Ends With End of Exclusivity.

Judge Stanley Marcus agreed with the lower court that under the terms of the contract, the Gramophone Co.'s exclusive license to record or re-record and distribute the song became a non-exclusive license in 1969, thereby ending any copyright ownership that it might have claimed.

This result was based on a reading of the text of the agreement. Under its terms, in some cases, master recordings for distribution would be recorded anew with singers and musicians provided by Shakti Films. In other cases, Shakti would supply the recordings used for creating the film soundtracks, which would serve as the masters for distribution. The agreement gave Gramophone “creative control” over the recordings of the first category. Shakti assigned its recording rights in both types of works to the Gramophone Co. The contract also provided that until Jan. 15, 1969, Shakti could not grant recording or distribution rights to any other party.

First, however, the court determined that the issue of copyright ownership must be decided under the Indian Copyright Act of 1957, under which the producer of a film is the initial owner of the copyrights of the sound recordings created for that film. Section 14 of the ICA specifies that to hold a “copyright” in a sound recording means to hold exclusively one of the relevant rights.

The question of whether the relevant copyright was effectively transferred to the Gramophone Co. would be the same under Indian and U.S. law, the court said. Namely, under Section 18 of the ICA, an assignment of copyright occurs when an exclusive right to perform one of the relevant rights is transferred. However, the key factor in this case was the provision that ending the exclusivity of the Gramophone's rights in January 1969.

“Today, therefore, Saregama does not continue to hold this exclusive right, and thus does not continue to own a sound recording copyright,” the court said.

The court's opinion was joined by Judges Rosemary Barkett and Jane A. Restani, sitting by designation from the U.S. Court of International Trade.

The defendants were represented by Andrew Harrison Bart of Jenner & Block, New York. Saregama was represented by S. Tracy Long of Santucci Priore & Long, Fort Lauderdale, Fla.

By Anandashankar Mazumdar

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