IP Law Daily, COPYRIGHT—S.D.N.Y.: Jazz singer transferred rights to recordings made with Oscar Peterson to club owner, (Jan 30, 2014)

By Thomas Long, J.D.

The widow of the late renowned jazz pianist Oscar Peterson, Kelly Peterson, and jazz club owner and operator Jayarvee, Inc. were entitled to a permanent injunction barring jazz singer Hilary Kolodin (professionally known as Hilary Kole) from selling, distributing, or otherwise using recordings of 12 performances of four songs that Kole and Oscar Peterson made in 2006, the federal district court in New York City has determined (Peterson v. Kolodin, January 29, 2014, Rakoff, J.). Peterson’s estate and Jayarvee owned the copyrights to the sound recordings at issue, by virtue of a release form filled out and signed by Kole. In addition, the court found that Kole had infringed the copyrights, and there was a risk of future infringement.

Oscar Peterson died on December 23, 2007. Kelly Peterson was one of three executors of his estate. Jayarvee owned and operated the famous New York jazz club, Birdland. Jayarvee was solely owned by its president, John Valenti.

While performing at Birdland, Kole met Oscar Peterson. Shortly thereafter, on August 25, 2006, Peterson and Kole recorded at the NOLA Recording Studios in New York City a total of twelve takes of four American standard songs—“More Than You Know,” “Our Love Is Here To Stay,” “My Romance,” and “Bewitched, Bothered and Bewildered”—with Peterson on piano and Kole contributing vocals.

At this time, Kole was romantically involved with Valenti. That relationship lasted until May 2011, when the two separated. A dispute over ownership of the recordings ensued, which centered on a document entitled “Recording Release” and signed by Kole.

The overall form for the document was created by Kole’s attorney for use in connection with what was called the “Duets” project, which led to a compact disc of duet performances by Kole and other artists that was released in 2010. The specific Recording Release document at issue in this case—referred to as the “You Are There Release”—was signed by Kole and began with the statement, “I [i.e. Kole] have rendered services as a musician and/or singer on 2005-2010 in connection with the recordings featuring Hilary Kole listed on Exhibit A attached hereto (the ‘Recordings’).” The years “2005-2010” were handwritten in a blank space on the form in Valenti’s handwriting. No Exhibit A was attached, but the bottom left side of the release contained a list, in Kole’s handwriting, of the four songs Kole recorded with Oscar Peterson, with the notation “w/ Oscar Peterson” after each song.

The You Are There Release further stated that Kole had received $100 in consideration for her services on the recordings and was entitled to no additional compensation. The remaining paragraphs (1) transferred all rights to the Recordings to an unidentified “you,” (2) granted “you” the right to use the releasor’s name and likeness in connection with the recordings, (3) provided that the release contained the entire agreement between the parties, and (4) provided for the agreement to be governed by New York law.

The parties disputed the circumstances regarding the You Are There Release. Valenti testified that Kole signed and gave him the You Are There Release in the dining room of their apartment in February 2010, after the Kole Duets had been recorded but before permission had been obtained to include the Peterson recordings in that CD (a permission that was never obtained). Kole testified that the release was “never intended for anyone,” and that she signed and wrote her personal information, including her Social Security number, on the You Are There Release while it was substantially blank, simply to demonstrate to an elderly musician, Hank Jones, how the form should be filled out.

Both sides agreed that the copyrights in the recordings were jointly owned by the Peterson Estate and by either Kole or Jayarvee. The plaintiffs claimed that, from the outset, the non-Peterson ownership of the recordings belonged to Jayarvee because Kole was acting as an agent of Jayarvee. The court, without reaching a conclusion as to this assertion, expressed skepticism toward this argument because there would have been no need for Jayarvee to obtain the You Are There Release if this were the case. The court did, however, conclude that any copyright interest Kole may have had in any of the recordings was transferred to Jayarvee through the You Are There Release.

The court rejected Kole’s testimony that the You Are There Release was intended to be “meaningless.” According to the court, the release, on its face, transferred Kole’s entire interest to all versions of the recordings to “you.” The circumstantial evidence strongly indicated that the “you” referred to in the document must be Jayarvee (Valenti). In addition, the fact that the original document remained in Valenti’s possession suggested that the parties intended to release the Recording to Valenti/Jayarvee. It also appeared that third parties operated on the assumption that Jayarvee (Valenti) owned the copyright and that Kole did not challenge that assumption, the court noted.

Kole argued that the identity of “you” in the You Are There Release was so ambiguous as to render the contract unenforceable. Specifically, defendant’s counsel, while agreeing that the “you” cannot be Kole, and could have been Jayarvee (Valenti), argued that it could also have been an entity called Justin Time Records, the licensee of the Duets album that the recordings were originally designed for. However, the court said, this argument is contradicted by Kole’s and Valenti’stestimony. Neither of them testified that the release had anything to do with Justin Time Records.

The court concluded that ownership of all copyrights in the recordings belonged jointly to Peterson and Jayarvee (Valenti). The court further found that there was a threat of infringement sufficient to support the issuance of a permanent injunction. Injunctive relief was warranted because, among other reasons, Kole not only attempted to register a copyright for a materially identical version of the recordings but also arranged for one of the recordings, of the song “More Than You Know,” to be played on the website blogtalkradio.com.

Accordingly, the court decided that copying had occurred in violation Sec. 106 of the Copyright Act and that plaintiffs were entitled both to a declaration that they were owners of the copyrights in all versions of the recordings and to an injunction permanently barring Kole from any sale, distribution, or other public use of the recordings.

The case is No. 13 Civ. 793 (JSR).

Attorneys: Paul J. Hanly, Jr. (Hanly Conroy Bierstein & Sheridan LLP) for Kelly Peterson and Jayarvee, Inc. Lawrence I. Garbuz (Lewis & Garbuz, PC) for Hilary Kolodin.

Companies: Jayarvee, Inc.

Cases: Copyright NewYorkNews