Beneficial Owner of “Spank” Has Standing in Copyright Infringement Suit: Smith v. Casey
The U.S. Court of Appeals for the Eleventh Circuit concluded that the estate of the composer of the famous song “Spank” has statutory standing in a copyright infringement claim, even though he was not the registered owner of the copyright registration. Smith v. Casey, Case No. 13-12351 (11th Cir., Jan. 22, 2014) (Kravitch, J.).
Plaintiff Ronald Louis Smith, Jr. as representative of the estate of his father, Ronald Louis Smith, Sr., is the author of the song “Spank,” a famous song from the 1970s. Smith assigned his rights in the song in exchange for royalties to Harrick Music, a publishing company. Harrick Music registered a copyright for the composition in which they identified Smith as the composer. In its registration, Harrick Music did not indicate that the work was a work made-for-hire.
In the following years, Smith received no royalties for exploitation of the song. He therefore sent a cease-and-desist letter to Harrick Music, revoking its authority to administer the song and also filed Notices of Termination with the Copyright Office, seeking to formally record his revocation. However, the defendants continued to commercially exploit the song.
Smith filed suit against various entities, including Harrick Music, alleging that these entities infringed its copyright because, as representative of the estate of the composer, he was the owner of the copyright. Smith sought, among other things, a declaration of the validity of copyright transfer terminations the estate filed under 17 U.S.C. § 203.
The federal district court concluded that the estate of the composer did not have statutory standing in the copyright infringement claim and dismissed the infringement claim. The district court noted that it was Harrick Music that registered the copyright, not the plaintiff, and a copyright registration was a necessary precondition to filing suit for infringement. Smith appealed, arguing that he had statutory standing to bring the infringement claim relying on the registration that Harrick Music had filed.&
The 11th Circuit reversed the district court, concluding that if a composer assigns the rights in a work to a publishing company in exchange for royalties and the copyright work is not a work-for-hire, the composer is the “beneficial owner” of the rights and has standing for the purposes of § 411(a) of the Copyright Act, even though the composer himself had not registered the work. The court explained that if this was not the case, then “redundant registrations would be necessary for statutory standing purposes every time legal and beneficial ownership of the same exclusive right rested with two distinct parties.”