On October 6, 2017, the United States District Court Southern District of New York in Ennio Morricone Music Inc. v. Bixio Music Group Ltd., denied plaintiff Ennio Morricone Music Inc.’s motion for summary judgment, which sought a declaratory judgment that it is the sole owner of the copyrights to several film scores, and could terminate an assignment of those copyrights pursuant to Section 203 of the Copyright Act. The Court instead granted summary judgment in favor of defendant, Bixio Music Group Ltd (“Bixio”), and found that “the works in question were specifically commissioned and constitute works for hire,” under Italian law, and thus, fall within an exception to Section 203, which prohibits the termination of a copyright assignment by an author when the work was “made for hire.”

Ennio Morricone (“Morricone”) is a renowned Italian composer, who recently received an Academy Award for his score to Quentin Tarantino’s film, The Hateful Eight. This case involved six film scores composed by Morricone in the late 1970s and early 1980s. Morricone and Bixio entered into a number of written agreements requiring Morricone to compose a musical score, for each of which Bixio entered into a separate agreement with a film producer to license each score composed by Morricone for use in a film.

The Court decided (and both parties agreed) that Italian law should be applied, as it is “the law of the state with the most significant relationship to the property and parties.” However, because Italian law does not provide a specific definition of a “work for hire,” the Court was forced to rely upon declarations from conflicting Italian law experts. While plaintiff’s expert’s opined that “Italian law ‘rules out in principle’ that a composer’s work can ever be a ‘work for hire,’” the Court did not find his opinion to be persuasive. Although the Court agreed with plaintiff’s expert that Italian copyright laws “do typically grant the original copyright to a work to its creator,” it noted that “this does not prevent the assignment of those rights.”

In contrast, defendant’s expert likened the concept of “work for hire” to a “commissioned” work, a term with legal significance in Italy. Defendant’s expert opined that under Italian law, similar to U.S. law, a work is “commissioned” if, among other things, “it was created in response to an order from a publisher or producer, and if the contract governing its creation assigns full rights to the publisher or producer who requested the work.” The Court agreed with defendant’s expert, and concluded that “[t]he six musical scores at issue [were] indeed commissioned works under Italian law … [and] the legal effect is the same as the American equivalent of work for hire.”

In making its decision the Court utilized a “work for hire” type analysis of the subject agreements, and noted that each agreement between Bixio and Morricone “commissions a score to match an existing film, and it lists instructions and deadlines that Morricone was to abide by,” including requirements that the recordings “take place in the city of Rome, in the studios and on the dates that . . . shall be set by reciprocal agreement [with Bixio].” The Court further noted that “[m]ost significantly, the contract[s] explicitly require[d] Morricone to ‘grant and transfer to [Bixio], exclusively, for the maximum total duration permitted by the laws in force in each country in the world, . . . all the rights of economic use, in any country in the world, with regard to the works.” Thus, the Court held that “plaintiff’s purported termination of the copyright assignment has no legal effect.”

CONCLUSION – Although the term “work for hire” is not defined under Italian law, the Court did not shy away from applying the distinctive U.S. “work for hire” principles when determining copyright ownership of the subject foreign works. Attorneys who draft and/or negotiate contracts on behalf of foreign authors and artists in connection with foreign works, should beware that the terms of such contracts may be interpreted by U.S. courts, even when applying foreign law, in a manner that could strip the individual authors or creators of their copyright ownership, and deny them their termination rights.

-By Pierre B. Pine