Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc. et al

Filing 53

OPINION AND ORDER: In sum, the Court concludes that the language of the 1966 Agreement forecloses any argument that Plaintiff owns exclusive rights to Mah Na Mah Na, and, therefore, Plaintiff lacks standing to sue. Accordingly, IT IS HEREBY ORDERED that Defendants' motion to dismiss is GRANTED. The Clerk is respectfully directed to close this case. (Signed by Judge Richard J. Sullivan on 12/30/2016) (tn)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

CREAZIONI ARTISTICHE MUSICALI,
S.r.l.,
Plaintiff,
No. 14-cv-9270 (RJS)
OPINION AND ORDER

-vCARLIN AMERICA, INC., et al.,
Defendants.

RICHARD J. SULLIVAN, District Judge:
Plaintiff Creazioni Artistiche Musicali, S.r.l. brings suit against Defendants Carlin
America, Inc., Edward B. Marks Music Co., and John Does 1–10 alleging copyright
infringement in connection with recordings of a song popularized by the Muppets (and others)
half a century ago. Now before the Court is Defendants’ motion to dismiss the First Amended
Complaint for failure to state a claim upon which relief can be granted. For the reasons set forth
below, Defendants’ motion is GRANTED.
I. BACKGROUND
A. Facts
On October 4, 1966, in Rome, Italy, Plaintiff, an Italian music publishing company,
entered into a written agreement with the Italian composer Piero Umiliani to compose and

perform music for the Italian-language action film Duello nel Mondo (the “1966 Film”).1 (FAC
¶¶ 1, 14; see also 1966 Agmt. ¶ 1.) In the 1966 Agreement, Umiliani transferred “[a]ll rights to
use the music that [he] composed, from the time of its creation . . . to [Plaintiff] for the entire
world with the right to transfer it in whole or in part to third parties, so long as [Umiliani’s]
rights are not prejudiced or limited.” (1966 Agmt. ¶ 2.) Umiliani “also [gave Plaintiff] the right
to extract one or more musical excerpts from the soundtrack for any adaptations or arrangements
that [Plaintiff] deem[s] necessary for the best commercial use and to add any lyrics to the
individual musical tracks with the full freedom to choose the author and the works so long as
[Umiliani’s] moral rights are not prejudiced.” (Id.) The 1966 Agreement also gave Plaintiff the
rights “to distribute and reproduce the music in any form and using any method.” (Id. ¶ 5.)
Umiliani composed “M33” (“Instrumental”) and “M33 with vocals” (“Vocal”) for the
1966 film’s soundtrack.

(FAC ¶¶ 2, 14–15, 27–28.)

Though “substantially similar” to

Instrumental, Vocal adds a soloist “singing a lyric of nonsense syllables over the existing
melody, harmony, rhythm, and structure” of Instrumental. (Id. ¶¶ 29–30.) The 1966 Agreement
was registered with SIAE, the Italian music-rights society, on December 31, 1966. (Id. ¶¶ 16,
31.) Plaintiff alleges that it owns the copyright in Instrumental and Vocal by virtue of the 1966
Agreement, including the exclusive rights to commercially exploit derivative works of the two
songs. (Id. ¶¶ 2–3, 14, 27.) In June 1968, Umiliani composed the song known as Mah Na Mah
Na. (Id. ¶ 37.) Though originally written for the film “Svezia, Inferno e Paradiso” (“Sweden,

1
The following facts are taken from the First Amended Complaint (Doc. No. 3 (“FAC”)) and from the parties’
agreed-upon translation of the October 4, 1966 agreement (Doc. No. 14-1 (“1966 Agmt.” or the “1966
Agreement”)); see also Chambers v. Time Warner, Inc., 282 F.3d 147, 152 (2d Cir. 2002) (Court may consider
extrinsic document on motion to dismiss where the complaint relies heavily upon its terms and effect.). The Court
has also considered the parties’ pre-motion letters (Doc. Nos. 5, 6), Defendants’ memorandum of law in support of
dismissal (Doc. No. 19 (“Mem.”)), Plaintiff’s opposition (Doc. No. 28 (“Opp’n”)), Defendants’ reply (Doc. No. 31),
Plaintiff’s supplemental opposition (Doc. No. 40 (“Supp. Opp’n”)), and Defendants’ supplemental reply (Doc. No.
43). As set forth in footnote three, the Court has also considered the parties’ submissions regarding Italian law.

2

Heaven and Hell”), Umiliani’s Mah Na Mah Na became “extremely successful” after being
performed by the Muppets on television and in film soundtracks. (Id. ¶¶ 37, 45.) Plaintiff
alleges that Mah Na Mah Na is “identical, virtually note-for-note,” to Vocal in its “melody,
harmony, rhythm, structure, and lyrics” and “substantially similar” to Instrumental for similar
reasons, and, accordingly, is an “unauthorized derivative work.” (Id. ¶¶ 40, 42, 45; see also id.
¶¶ 3, 48, 50, 53; Opp’n 8–13.)
B. Procedural History
Nearly fifty years after the publication of Mah Na Mah Na, Plaintiff brought suit in this
Court on November 21, 2014 (Doc. No. 1), alleging that Defendants infringed Plaintiff’s
copyrights in Instrumental and Vocal by preparing, reproducing, publicly distributing, and
publicly performing Mah Na Mah Na and/or authorizing others to engage in such acts (FAC ¶¶
50, 53). On March 11, 2015, Plaintiff amended its complaint to elaborate on its allegations
(Doc. No. 3), and on June 15, 2015, the Court received the parties’ agreed-upon translation of
the contract (Doc. No. 14). On June 24, 2015, Defendants filed the instant motion to dismiss
Plaintiff’s Amended Complaint. (Doc. No. 18.) Plaintiff submitted its opposition on July 24,
2015, while Defendants submitted their reply on August 3, 2015. (Doc. Nos. 28, 31.)
On February 23, 2016, the Court held a conference to address choice-of-law issues in this
case and ordered supplemental briefing, including expert reports and declarations, on Italian law.
(Doc. Nos. 35, 38.) On May 17, 2016, Plaintiff filed a supplemental opposition brief (Doc. No.
40), and on June 21, 2016, Defendants submitted a supplemental reply brief (Doc. No. 43). On
July 12, 2016 and September 13, 2016, the Court held hearings and took testimony from the
parties’ experts regarding Italian law.

3

II. LEGAL STANDARD
A. Rule 12(b)(6)
To survive a motion to dismiss pursuant to Rule 12(b)(6) of the Federal Rules of Civil
Procedure, a complaint must “provide the grounds upon which [the] claim rests.”

ATSI

Commc’ns, Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir. 2007); see also Fed. R. Civ. P.
8(a)(2) (“A pleading that states a claim for relief must contain . . . a short and plain statement of
the claim showing that the pleader is entitled to relief . . . .”). To meet this standard, plaintiff
must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007). “A claim has facial plausibility when the plaintiff pleads
factual content that allows the court to draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). In reviewing a Rule
12(b)(6) motion to dismiss, a court must accept as true all factual allegations in the complaint
and draw all reasonable inferences in favor of the plaintiff. ATSI Commc’ns, 493 F.3d at 98.
However, that tenet “is inapplicable to legal conclusions.” Iqbal, 556 U.S. at 678. Thus, a
pleading that offers only “labels and conclusions” or “a formulaic recitation of the elements of a
cause of action will not do.” Twombly, 550 U.S. at 555. If the plaintiff “ha[s] not nudged [its]
claims across the line from conceivable to plausible, [its] complaint must be dismissed.” Id. at
570.
B. Standing Under the Copyright Act
As relevant here, the Second Circuit has instructed that a plaintiff suing for copyright
infringement in a United States court must satisfy the statutory standing test set forth under the
United States Copyright Act even where, as noted below, the law of a foreign jurisdiction
governs other issues in the case. Itar-Tass Russ. News Agency v. Russ. Kurier, Inc., 153 F.3d 82,

4

91 (2d Cir. 1998). Thus, in order to have standing to sue, a plaintiff must be “the legal or
beneficial owner of an exclusive right under a valid copyright at the time of the alleged
infringement.” Hutson v. Notorious B.I.G., LLC, No. 14-cv-2307 (RJS), 2015 WL 9450623, at
*3 (S.D.N.Y. Dec. 22, 2015) (citing 17 U.S.C. § 501(b) and Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361 (1991)); accord Davis v. Blige, 505 F.3d 90, 101 (2d Cir. 2007).
Where a plaintiff is not the initial author, it may bring suit only if it has acquired ownership of
the copyright or an “exclusive license” from the original copyright holder. Davis, 505 F.3d at
101. By contrast, “the holder of a nonexclusive license may not sue others for infringement.”
Id.
III. DISCUSSION
A. Choice of Law
Before turning to the merits, the Court must first address choice of law. As noted above,
the parties’ dispute centers on the scope of Umiliani’s alleged transfer of his rights in Vocal and
Instrumental under the 1966 Agreement. This issue is potentially dispositive, since absent a
transfer of ownership or an exclusive license under the 1966 Agreement, Plaintiff would lack
standing to sue. Defendants argue that Italian law governs this dispute, while Plaintiff urges the
Court to apply United States law. (Compare Mem. 6, with Opp’n 3.) Because there is no
applicable choice-of-law provision under the United States Copyright Act to resolve this
conflict, the Court “fill[s] the interstices of the Act” by applying “federal common law on the
conflicts issue.” Itar-Tass, 153 F.3d at 90. “The federal common law choice-of-law rule is to
apply the law of the jurisdiction having the greatest interest in the litigation.” In re Koreag,
Controle et Revision S.A., 961 F.2d 341, 350–51 (2d Cir. 1992). Accordingly, the Court must
“evaluate the various contacts each jurisdiction has with the controversy, and determine which

5

jurisdiction’s laws and policies are implicated to the greatest extent.” Id. at 350. Furthermore,
district courts “may consult the Restatement (Second) of Conflict of Laws” for guidance in
weighing the interests of different jurisdictions. Eli Lilly Do Brasil, Ltda. v. Fed. Express Corp.,
502 F.3d 78, 81 (2d Cir. 2007) (internal quotation marks and brackets omitted).
Applying these principles in the context of copyright disputes, the Second Circuit has
concluded that “[c]opyright is a form of property, and the usual rule is that the interests of the
parties in property are determined by the law of the state with ‘the most significant relationship’
to the property and the parties.” Itar-Tass, 153 F.3d at 90. As a general matter, the law of the
jurisdiction where an artistic work is “created” and “first published” governs issues concerning
copyright ownership. See id. (“Since the works at issue were created by Russian nationals and
first published in Russia, Russian law is the appropriate source of law to determine issues of
ownership of rights.”); accord Saregama India Ltd. v. Mosley, 635 F.3d 1284, 1290 (11th Cir.
2011) (since song “was created in India, our interpretation of the Agreement and ultimate
determination of whether [plaintiff] owns a copyright in the [song’s] sound recording is
governed by Indian copyright law”). By contrast, the Second Circuit has analogized copyright
infringement issues to tort claims. Itar-Tass, 153 F.3d at 91. Consistent with the principle of lex
loci delicti often applied in tort suits, the law of the jurisdiction where the allegedly infringing
acts take place generally governs infringement issues. Id. (applying United States law to issues
related to copyright infringement, since the alleged copyright infringement took place in the
United States).
Although issues of assignment would appear to be more analogous to ownership than
infringement, the jurisprudence concerning voluntary assignment of copyright – the relevant
issue in this motion – is admittedly less well developed. See id. at 91 n.11 (declining to address

6

choice-of-law issues concerning copyright assignment); see also Close-Up Int’l, Inc. v. Berov,
382 F. App’x 113, 116 n.2 (2d Cir. 2010) (similarly declining to reach the issue). The Court
takes guidance from the Restatement, which instructs courts to determine which jurisdiction has
the most significant relationship to the dispute based on factors such as: (1) “the needs of the
interstate and international systems,” (2) “the relevant policies of the forum,” (3) “the relevant
policies of other interested states and the relative interests of those states in the determination of
the particular issue,” (4) “the protection of justified expectations,” (5) “the basic policies
underlying the particular field of law,” (6) “certainty, predictability and uniformity of result,”
and (7) “ease in the determination and application of the law to be applied.” Restatement
(Second) Conflicts of Laws § 6 (Am. Law Inst. 1971); see also Eli Lilly, 502 F.3d at 81; 5
Nimmer on Copyright §§ 17.05, 17.11[B][2] & n.25. In weighing these factors, the Restatement
further instructs that in contractual disputes, the following five contacts are “to be taken into
account”: (1) “the place of contracting,” (2) “the place of negotiation of the contract,” (3) “the
place of performance,” (4) “the location of the subject matter of the contract,” as well as (5) “the
domicile, residence, nationality, place of incorporation and place of business of the parties.”
Restatement (Second) Conflicts of Laws § 188[2]. By way of example, “[i]f two parties gather in
St. Petersburg, sign a contract in Russian for exploitation of a work by Aleksandr Solzhenitsyn,
in Russia and throughout the world, with a Russian choice-of-law provision, then one may
hazard to venture that Russian law exerts ‘the most significant relationship’ to the parties’
interests.” Nimmer § 17.05[B][2][b].
The Restatement provides other useful guidance. For example, “[w]hen the acts of
assignment on the part of both assignor and assignee are done in the same state, this state will
usually be the state of most significant relationship, except when the place of assignment bears

7

no normal relation to the transaction.” Restatement (Second) Conflict of Laws § 209 cmt. c.
Furthermore, “protection of the justified expectations of the parties is of considerable
importance” with respect to conflicts involving property, since the parties “expect certain legal
consequences to ensue from a given transaction and, in the absence of strong countervailing
considerations, their expectations should not be disappointed.” Id. § 222 cmt. b. In the same
vein, the Supreme Court has also instructed that a “paramount goal” of copyright law is to
“enhance[e] predictability and certainty of copyright ownership.” Cmty. for Creative NonViolence v. Reid, 490 U.S. 730, 749 (1989).
Here, Italy is the jurisdiction where the 1966 Agreement was executed, where Vocal and
Instrumental were created, where Il Duello del Mondo was produced, and where all parties to the
1966 Agreement were domiciled.

Tellingly, Umiliani and Plaintiff consented to the “sole

jurisdiction” of the Court of Rome over “any dispute” arising between Umiliani and Plaintiff
under the 1966 Agreement, which also supports a finding that the parties expected Italian law to
govern issues relating to ownership and assignment. (1966 Agmt. ¶ 8). Furthermore, the 1966
Agreement expressly contemplates Umiliani’s retention of “moral rights” (id. ¶ 2), which were
recognized under Italian law at the time, but were not available in the United States. Compare
Gilliam v. Am. Broad. Cos., Inc., 538 F.2d 14, 24 (2d Cir. 1976) (“American copyright law . . .
[does] not recognize moral rights or provide a cause of action for their violation.”), with Alberto
Musso & Mario Fabiani, “Italy” § 7[1] in International Copyright Law and Practice (Lionel
Bently ed., 2015) (outlining the Italian Copyright Act’s “express provisions on moral rights”).2
The fact that United States law would therefore render at least certain portions of the 1966

2

As discussed in greater detail below, moral rights guarantee “paternity or authorship of [the author’s] work” and
the right by the author “to object to any distortion or modification that may affect his [honor] or reputation.” 5
Giorgio Mondini et al., World Intellectual Property Rights and Remedies § 80:6 (Nov. 2016).

8

Agreement meaningless weighs heavily in favor of application of Italian law. See Eli Lilly, 502
F.3d at 82 (“‘The parties cannot be presumed to have contemplated a law which would defeat
their engagements.’” (quoting Pritchard v. Norton, 106 U.S. 124, 137 (1882)).
Significantly, Plaintiff fails to point to any relevant contacts between the United States
and the 1966 Agreement. Rather, Plaintiff attempts to analogize this case to Corcovado Music
Corp. v. Hollis Music, Inc., 981 F.2d 679 (2d Cir. 1993), in which the Second Circuit applied
United States law to a copyright dispute, notwithstanding the relevance of a series of Brazilian
contracts. (Doc. No. 6 at 2.) That case, however, is, distinguishable from this one in several
respects. First, “the place of performance of the contracts” in Corcovado was the United States,
Corcovado, 981 F.2d at 685, whereas the 1966 Agreement contemplated performance in Italy
(see FAC ¶ 15). Second, the Corcovado plaintiff “assert[ed] no rights whatsoever arising out of”
the Brazilian contracts, and “they form[ed] no part of plaintiff Corcovado’s case.” Corcovado,
981 F.2d at 682. Here, by contrast, Plaintiff’s copyright claim is premised entirely on language
set forth in the 1966 Agreement, an Italian contract. Finally, the dispute in Corcovado centered
on whether the author maintained his renewal term.3 Since “the reversion of renewal is a unique
feature of U.S. law,” and since “Brazilian law would presumably not recognize the assignment”
at issue in the case, the public policy interests of the United States in application of United States
law were deemed to be substantial in that dispute. See 5 Nimmer on Copyright § 17.05[B][2][c]
(distinguishing Corcovado from Itar-Tass). Here, Plaintiff fails to point to any countervailing

3

As the Second Circuit has explained, “the Copyright Act establishes two terms of protection: an initial term of
twenty-eight years from the date the copyright was originally secured and a renewal term of sixty-seven years,”
which is “a new estate clear of all rights, interests or licenses granted under the original copyright.” Gary Friedrich
Enters., LLC v. Marvel Chars., Inc., 716 F.3d 302, 312 (2d Cir. 2013) (internal quotation marks and alterations
omitted). The purpose of the renewal term “is to provide authors a second opportunity to obtain remuneration for
their works and to renegotiate the terms of the grant once the value of the work has been tested,” id. (internal
quotation marks omitted), and as the Second Circuit underscored in Corcovado, “there is a strong presumption
against the conveyance of renewal rights” under U.S. law, Corcovado, 981 F.2d at 684.

9

policies that would be advanced by application of United States law to the 1966 Agreement, nor
can the Court identify any.4
Accordingly, the Court concludes that application of Italian law comports with the
justifiable expectations of the parties to the 1966 Agreement and that Italy has a greater interest
in this controversy – as it pertains to the assignment of rights under the 1966 Agreement – than
does the United States. The Court thus applies Italian law to the parties’ dispute concerning the
1966 Agreement.
B. Application of Italian Law to the 1966 Agreement
Having determined that Italian law applies, the Court next makes findings regarding the
content of that law pursuant to Rule 44.1 of the Federal Rules of Civil Procedure, and then
applies the law to the facts of this case. See Fed. R. Civ. P. 44.1; Itar-Tass, 153 F.3d at 92
(noting that “[d]etermination of a foreign country’s law is an issue of law” for determination by
the district judge under Rule 44.1); accord Rationis Enters. Inc. of Panama v. Hyundai Mipo
Dockyard Co., 426 F.3d 580, 586 (2d Cir. 2005) (noting that “the responsibility for correctly
identifying and applying foreign law rests with the court”). In making findings regarding Italian
law, the Court has considered the declarations of Defendants’ expert, Professor Paolo Marzano,
and Plaintiff’s expert, Professor Gustavo Ghidini; has held two hearings at which both of these
experts testified; and has also conducted its own independent research. (See Doc. Nos. 21, 41,

4

It could be argued that the Berne Convention for Protection of Literary and Artistic Works, which provides that
“[o]wnership of copyright in a cinematographic work shall be a matter for legislation in the country where
protection is claimed,” Berne Convention, Art. 14bis (2)(a), supports application of United States law here to the
issues of ownership and assignment, since the 1966 Agreement involved a film score. Even so, Plaintiff never made
this argument and therefore has waived it. And in any event, this provision “is not a part of domestic law” because
“no provision of the Berne Convention is self-executing,” and therefore, “courts are free to apply to ownership
issues involving foreign cinematographic works the law of the country of origin.” 7 Patry on Copyright § 25:55
(2016); see also id. § 25:54 (criticizing the Berne provision and finding that “[a] better approach would be to require
application of the law of the country of origin”).

10

42, 44); see also Rationis Enters. Inc. of Panama, 426 F.3d at 586 (noting that the district court
has latitude under Rule 44.1 “to enlist the parties in this effort” in the “the proper determination
of foreign law”); Winn v. Schafer, 499 F. Supp. 2d 390, 396 & n.28 (S.D.N.Y. 2007)
(considering expert submissions and live testimony to determine the substance of foreign law at
Rule 12(b)(6) stage); Faggionato v. Lerner, 500 F. Supp. 2d 237, 251 (S.D.N.Y. 2007) (same).
While the Court has also considered the declaration of Plaintiff’s other expert, Mario
Cantini, the Court did not find his testimony necessary or useful. Mr. Cantini is a former a jazz
piano player who also worked in the recording industry and claims to be an “expert” regarding
the practices of the music publishing industry during the 1960s. (Doc. No. 42.) Under Italian
law, “ambiguous” provisions in commercial contracts are interpreted by reference to industry
customs. See Patrick Tinsley & Prof. Avv. Alessio Di Amato, 3 Digest of Commercial Laws of
the World § 30:31 (Aug. 2016) (citing Ital. Civil Code. art. 1368). But because, for the reasons
set forth below, the Court finds that the 1966 Agreement is not ambiguous, Mr. Cantini’s
declaration is not useful to the Court. Mr. Cantini’s declaration is also not helpful because it is
highly conclusory. For instance, Mr. Cantini asserts that the 1966 Agreement represents “the
typical standard agreement and uses the typical standard language” in the Italian music industry,
but he fails to point to any examples of other agreements as evidence. In fact, his declaration is
devoid of any citations. See Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290,
311 (2d Cir. 2008) (“An expert’s conclusory opinions are . . . inappropriate.”). Accordingly, the
Court places minimal weight on Mr. Cantini’s conclusions.
Plaintiff asserts that, by virtue of the 1966 Agreement, it acquired an exclusive ownership
interest in the “preparation, reproduction, public distribution, and public performance of [the two
songs’] derivative works,” including Mah Na Mah Na.

11

(FAC ¶¶ 50, 53.)

By contrast,

Defendants urge dismissal, arguing that, under the 1966 Agreement, “Umiliani did not transfer to
[Plaintiff] an exclusive right to create and exploit derivative works,” and therefore, Plaintiff
lacks standing because it is not a legal or beneficial owner of this right. In other words,
according to Defendants, the composer “retained the right to create and to authorize
[Defendants] to help create and exploit Mah Na Mah Na, even if Mah Na Mah Na is, as
[Plaintiff] alleges, a derivative of” Instrumental or Vocal. (Mem. 16.) For the reasons set forth
below, the Court agrees with Defendants.
Under Chapter III, Section I of the Italian Copyright Act (1941), a copyright owner holds
a series of rights with respect to an intellectual work, including the rights to reproduce,
distribute, publicly perform, modify, elaborate on, and transform the work. Law No. 633 of
April 22, 1941, for the Protection of Copyright and Neighboring Rights (as amended by Leg.
Decree

No.

685,

Nov.

16,

1994)

(It.),

available

at

http://www.wipo.int/wipolex/en/text.jsp?file_id=128161; (see also Doc. No. 21-2) (the “Italian
Copyright Act” or “1941 Act”).5 The author, defined as the person who creates “a work
resulting from an intellectual effort,” is the first owner of the copyright and has the “exclusive
right to the economic utilization of the work in any form or manner, whether original or
derivative, within the limits fixed by [the] Law.” Id. arts. 6, 12. In addition to his economic
rights, an author has a series of inalienable moral rights, which, as noted above, guarantee
“paternity or authorship of [the author’s] work” and the right of the author “to object to any
distortion or modification that may affect his [honor] or reputation.” Mondini § 80:6.

12

The Italian Copyright Act also includes certain special rules that apply to
cinematographic works. For example, “the director, the author of any material adapted to the
screen, the screenwriter, and the soundtrack composer” are considered “co-authors” of the work.
See Musso & Fabiani § 4[1][a][ii]. Pursuant to Article 49 of the Copyright Act, the composers
of musical components of cinematographic works “may reproduce [their parts of the work] or
utilize them separately in any manner, provided no damage is thereby occasioned to the rights of
utilization[,] the exercise of which belongs to the producer.” 1941 Act art. 49 (emphasis added);
see also Musso & Fabiani § 4[1][a][ii]. Therefore, as the composer of the film soundtrack,
Umiliani maintained the right to reproduce the film score and utilize his creation in any manner,
so long as the rights of the 1966 Film’s producer (who is not named in the First Amended
Complaint) were not prejudiced.
Of course, an author may transfer his economic rights, as is expressly recognized by
Article 107 of the Italian Copyright Act. 1941 Act art. 107. Moreover, in construing “contracts
effectuating copyright transfers,” courts are to apply the principles of Italian contract law,
“which are set forth in the [Italian] Civil Code.” Musso & Fabiani § 4[3][a][i]. Under Section
1363 of the Italian Civil Code, “[e]very clause of the contract is interpreted with reference to all
the others, attributing to each the meaning resulting from the act as a whole.” Pignoloni v.
Gallagher, No. 12-cv-3305 (KAM) (MDG), 2012 WL 5904440, at *24 (E.D.N.Y. Nov. 25,
2012) (quoting Italian Civil Code, Susanna Beltramo trans., Thompson Reuters (2012)).
Furthermore, under Section 1367 of the Italian Civil Code, “[i]n case of doubt, the contract or

5

Since both parties reference the same World Intellectual Property Organization translation of the Italian Copyright
Act, the Court relies upon this translation as well. (Docs. No. 21-1, 41 at 7 n.1.) Although the Italian Copyright
Act has been amended numerous times since 1941, both parties’ experts agree that the relevant provisions at issue in
this case have not substantially changed in a manner that would impact the outcome. (Doc. Nos. 41 at 7 n.1, 51 at
11:5–14.)

13

the individual clauses shall be interpreted in the sense in which they can have some effect, rather
than in that according to which they would have none.” Id.
While economic rights are freely alienable, the Italian Copyright Act employs several
rules of construction that staunchly protect the rights of the original author. As an authoritative
treatise makes clear, the “narrow construction of copyright transfers . . . applies, as a matter of
principle, to any contractual transfer of interests from the author to another party.” See Musso
& Fabiani §§ 4[3][a][ii], 4[3][b][i]. Under Article 19, “[t]he exercise of any one right” on the
part of an author “shall not exclude the exercise of the other rights.”

1941 Act art. 19.

Consequently, “the contractual grant of one such right does not necessarily include the grant of
the exclusive exercise of each of the other rights, so that any total assignment of all the economic
components of copyright must be expressly agreed to.” Musso & Fabiani § 4[2][a]. In other
words, Article 19 establishes a “general rule” that “the transfer of a right does not involve the
transfer of all the other rights that are not strictly necessary to exercise the right assigned.”
Mondini § 80:13.
Article 119 provides further support for the narrow construction of copyright transfers.
Under paragraph four of that provision, absent “express stipulation,” a transfer of exploitation
rights in an intellectual work “shall not extend to the rights of utilization in later elaborations and
transformations to which the work may lend itself.” 1941 Act art. 119. As scholars have
explained, this section of Article 119 is designed “to protect the interests of the authors who
would not be capable of assessing the potential economic value of future rights.” Mondini
§ 80:13. Furthermore, paragraph five of Article 119 creates a default presumption that “the
alienation of one or more of the rights of utilization shall not imply the transfer of other rights
which are not necessarily dependent upon the right transferred.” 1941 Act art. 119. And

14

although Article 119 is contained in the section of the Italian Copyright Act that addresses
publishing agreements, it has been construed to “set[] out a general rule” applicable “in all cases
of contracts conveying rights of use” that “any total assignment of all the economic components
of copyright must be expressly agreed to.” Musso & Fabiani § 4[2][a].
The principle of narrow construction is especially salient in the context of commissioned
works. The Italian Supreme Court (also known as the “Supreme Court of Cassation”) has
instructed that “the rights to use a commissioned work belong to the commissioning party only
within ‘the limits of the object and purpose of the contract’ under which the commission takes
place.” Id. § 4[1][b][v]. Because “[o]nly those rights allowing the aim of the underlying
contract to be reached will be considered as transferred,” the commissioning party bears “the
burden of proof of any wider transfer.” Id.
Having carefully considered the language of the contract and the relevant Italian law, the
Court finds that the 1966 Agreement lacks the clear expression of intent necessary to transfer full
ownership of the film score, let alone the exclusive right to exploit derivative works of Vocal
and Instrumental. According to the second paragraph of the 1966 Agreement:
(2) All rights to use the music that you composed, from the time of its creation,
shall be transferred to us for the entire world with the right to transfer it in whole
or in part to third parties, so long as your rights are not prejudiced or limited.
You also give us the right to extract one or more musical excerpts from the
soundtrack for any adaptations or arrangements that we deem necessary for the
best commercial use and to add any lyrics to the individual musical tracks with
the full freedom to choose the author and the works so long as your moral rights
are not prejudiced. (1966 Agmt. ¶ 2 (emphasis added).)
Plaintiff relies heavily on the first sentence of this paragraph – which begins with Umiliani’s
conveyance of “[a]ll rights to use the music that [Umiliani] composed” to Plaintiff “for the entire
world” – for the proposition that Umiliani transferred exclusive economic rights to Plaintiff.
(Id.; see also Supp. Opp’n 4–13; Doc. No. 41 (“Ghidini Decl.”) at 16.) However, the Agreement

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contains no express limitation on Umiliani’s own rights to adapt and exploit the music he
composed for the film, and without such an express stipulation, Umiliani’s conveyance could not
have included “rights of utilization in later elaborations and transformations.” 1941 Act art. 119.
To the contrary, the 1966 Agreement contains the express reservation that Umiliani’s rights may
“not [be] prejudiced or limited.” (1966 Agmt. ¶ 2.) While Plaintiff argues that this provision
reserved “contractual rights” under the 1966 Agreement to receive payment and “not rights
under the Italian Copyright Act” (Supp. Opp’n 11), the Court finds Plaintiff’s argument
unpersuasive, since paragraphs four and five of the 1966 Agreement already set forth Umiliani’s
rights to consideration under the contract (1966 Agmt. ¶¶ 4, 5). Furthermore, the provision does
not limit itself to contractual rights, but instead refers to “rights” generally. Indeed, the Court
concludes that Plaintiff’s reading of the contract, whereby Umiliani transferred his ownership of
the copyright to Plaintiff, would render the “so long as your rights are not prejudiced or limited”
condition surplusage. Because the Court must attribute meaning to each clause of the 1966
Agreement, see Pignoloni, 2012 WL 5904440, at *24, the Court finds Plaintiff’s proffered
interpretation that it obtained exclusive ownership of Vocal and Instrumental to be implausible.
The second sentence of paragraph two further buttresses this conclusion. If the “all
rights” language truly conveyed “full and absolute ownership” of Instrumental and Vocal, as
Plaintiff argues (Sept. 13 Tr. 14:14), then Umiliani’s conveyance of the “right to extract one or
more musical excerpts from the soundtrack” would be entirely unnecessary, since Plaintiff would
already have the right to exclude all others, including Umiliani, from exploiting the film score.
(Id. ¶ 2.) In other words, had the first sentence of paragraph two represented a total conveyance
of economic rights, then Umiliani would have no remaining economic rights to give. Plaintiff
argues that this sentence does not involve the transfer of economic rights at all; rather, Plaintiff

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argues that it was merely “reassur[ing] Umiliani” that Plaintiff would respect Umiliani’s moral
rights by virtue of Umiliani’s “complete transfer” effectuated earlier in the second paragraph.
(Supp. Opp’n 12; see also id. at 17 (arguing that this clause is not a “further grant of rights to
make certain derivative works,” and instead simply clarifies the scope of the “all rights”
language).) But Plaintiff’s argument is simply untenable in light of the plain language of the
1966 Agreement, under which Umiliani “also gives” Plaintiff the right to extract musical
excerpts from the film score. As this language makes clear, the second sentence of paragraph
two was meant to entail a separate and distinct conveyance from the transfer enumerated in the
first sentence of that paragraph.
Plaintiff’s proposed construction is especially inappropriate in light of the fact that, as
both experts acknowledge, Vocal and Instrumental are considered commissioned works. (Doc.
No. 51 (“July 12 Tr.”) at 15:24–25; Sept. 13 Tr. 22:5–7.) As noted above, Italian copyright law
provides that Plaintiff’s rights to use Vocal and Instrumental belong to Plaintiff only “within the
limits of the object and purpose” of the contract. As is clear from the language of the 1966
Agreement itself, its “object and purpose” was to facilitate the composition, performance, and
dissemination of music for the 1966 Film. (See 1966 Agmt. ¶¶ 1, 2, 5.) Plaintiff asserts that as a
music publisher, it was interested in the broadest possible conveyance of rights associated with
the music commissioned for the film, including the right to exploit derivative versions of Vocal
and Instrumental. (Ghidini Decl. 11–12.) But Plaintiff fails to explain why its acquisition of
exclusive rights to all future derivations of Vocal and Instrumental would have been necessary to
achieve the 1966 Agreement’s purposes. In fact, as one treatise explains, “[e]xclusivity is not
considered essential in . . . publishing agreement[s]” in Italian law. Mondini § 80:13. In any
event, the Court must consider the interests of both parties when construing the agreement, with

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the default rules under the Italian Copyright Act favoring the transferor rather than the
transferee. See Pignoloni, 2012 WL 5904440, at *24 (courts must consider “the common intent
of the parties . . . in interpreting” contracts under Italian law (quoting Italian Civil Code §
1362)). Put simply, had the parties wished to transfer full ownership of the economic rights in
the music, or at least exclusive ownership of the right to exploit derivative versions of it, they
easily could have done so. As written, however, the 1966 Agreement reveals no such intent,
much less an express stipulation transferring exploitation rights to derivative works not yet in
existence.
Notwithstanding the language of the 1966 Agreement, Plaintiff’s expert points to a series
of Italian cases in which a composer was found to have transferred the totality of his economic
rights, extrapolating from these decisions the proposition that, under “music publishing
contracts,” publishing companies presumptively assume “full and absolute ownership of the
work.”

(See Sept 13 Tr. 14:11–17; see also 10:4–11, 11:11–17, 17:25–18:10, 26:20–27:3

(concluding that the default rule of construction with respect to music publishing agreements is
conveyance of all economic rights “en bloc”). To be sure, a composer is free to assign the
totality of his economic rights to a publisher under Article 107 of the Italian Copyright Act, or to
any counterparty for that matter. But, as noted above, such transfers must be supported by the
text of the relevant agreements. Thus, the Court finds Plaintiff’s arguments for recognizing a
presumption of total transfer in contracts involving music publishing companies to be
unpersuasive for several reasons.
First, a presumption in favor of alienation in the context of music publishing agreements
would represent a significant deviation from the principle that “narrow construction of copyright
transfers . . . applies, as a matter of principle, to any contractual transfer of interests from the

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author to another party.” Musso & Fabiani § 4[3][a][ii] (emphasis added). Second, Plaintiff’s
expert fails to cite a specific provision of the Italian Copyright Act carving out this special rule
for music publishing contracts and acknowledges that his argument is derived entirely from case
law in Italian courts (see Sept. 13 Tr. 15:4–10), notwithstanding the fact that Italy is “a civil law
jurisdiction” in which courts apply “civil code and statutory provisions as the primary source of
law and give them preponderant consideration,” see Curley v. AMR Corp., 153 F.3d 5, 14 (2d
Cir. 1998) (applying Mexican law). In other words, in Italy there is a “lack of stare decisis and a
formal rule of precedent.” Douglas L. Parker, Standing to Litigate “Abstract Social Interests” in
the United States and Italy: Reexamining “Injury in Fact,” 33 Colum. J. Transnat’l L. 259, 275
(1995). As a result, Plaintiff’s expert’s overreliance on court precedents and failure to ground
his arguments in the text of the Italian Copyright Act significantly undermines the
persuasiveness of his report and his testimony. And while it is true that Italian court decisions,
particularly those of the Court of Cassation, may be treated as persuasive (even if not binding)
authority, see Romantic Common Law, Enlightened Civil Law: Legal Uniformity and the
Homogenization of the European Union, 7 Colum. J. Eur. L. 63, 88–89 (2001), a careful review
of the English translations of these cases (see Doc. No. 45) reveals no support for a presumption
in favor of alienation of all of a composer’s economic rights in the context of music publishing
agreements. In any event, even if a presumption in favor of “en bloc” alienation could be said to
exist with respect to music publishing agreements, the Court finds that the unambiguous
language reserving Umiliani’s rights in the 1966 Agreement would rebut that presumption.
In light of the unambiguous language of the 1966 Agreement and the protections afforded
to authors under the Italian Copyright Act, the Court concludes that Plaintiff fails to plausibly
allege that it owns the exclusive right to exploit derivative works of Vocal and Instrumental,

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such as Mah Na Mah Na. The Court thus finds that Plaintiff lacks standing to sue Defendants for
copyright infringement, and that the First Amended Complaint must therefore be dismissed. 6
IV. Co

CL USION

In sum, the Cou1t concludes that the language of the 1966 Agreement forecloses any
argument that Plaintiff owns exclusive rights to Mah Na Mah Na, and, therefore, Plainti ff lacks
standing to sue. Accordingly, IT IS HEREBY ORDERED that Defendants ' motion to dismiss is
GRANTED. The Clerk is respectfully directed to close this case.
SO ORDERED.
Dated:

December 30, 20 16
New York, New York
RI HARD J. SULLIVAN
UNITED STATES DISTRICT JUDGE

---

6

The Court al so finds that, even if the law of the United States were to apply, it would reach the same result. Under
the 1909 Act, which would have applied at the time of the 1966 Agreement, "unless the a uthor has given up his or
her rights under copyright in a clear and uneq uivocal manner, he or she retain s these rights." Jim He11so11 Prods..
Inc. v. John T. Brady & Assocs., Inc., 16 F. Supp. 2d 259, 285 (S.D.N.Y. 1997); Philipp v. Jerome H. Remick &
Co. , 145 F. Supp. 756, 758 (S. D.N. Y. 1956) (" The clearest language is necessary to divest the author of the fruits of
hi s labor.'"); accord Warner Bros. Pictures v. Columbia Broad. .S:vs., 2 16 F.2d 945, 949 (9th Cir. 1954) (same); see
also Weinstein Co. v. Smokewood £111111 't Grp., LLC, 664 F. Supp. 2d 332, 341 (S.D.N.Y. 2009) (recognizing, under
the 1976 Act, that " intention of a copyrigh t owner seek in g to transfer an ownership interest must be clear and
unequivoca l"). For the reasons set fort h above, the Court concludes that Umiliani did not manifest a ·'clear and
unequivocal" inte nt to convey his rights in Vocal and Instrumenta l in the 1966 Agreement.
Defendants also argue that Plaintiff's cla im with respect to Instrumental should be di smi ssed because Umi li ani did
not convey the renewal term in the copyright to Plaintiff (Mem. 20- 25) and that the 1966 Agreement has no
appli cation to Vocal because it was not ultimately included in the film (Mem. 17- 19). Because the Court concludes
that Plaintiff' s suit shou ld be dismissed for lack of stand ing, it declines to address these other arguments.

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