IP Law Daily, COPYRIGHT—E.D.N.Y.: Court lacks power to alter Copyright Office records, (Jun 6, 2023)

By Matthew Hersh, J.D.

An aggrieved co-author could seek an accounting and a declaration of joint ownership, but could not force the Office to add his name to the registration.

A songwriter who contributed the English-language lyrics to a melody that is firmly embedded within the rites of Jewish worship and ritual was not entitled to a court order correcting Copyright Office records that allegedly left off his name, the federal court for Brooklyn has held. The court, while allowing the songwriter’s action for declaratory relief and an accounting for profits to go forward, emphasized that neither the Copyright Act nor any other federal statute granted the courts the power to alter Office records (Kahn v. Carlebach, June 2, 2023, Donnelly, A.).

The lawsuit involves the song Return Again, a song with both Hebrew and English lyrics that is commonly attributed to the late rabbi and songwriter Shlomo Carlebach. The “singing rabbi,” as he was known to his many followers, was widely considered to be one of the foremost Jewish singer/songwriters of his time.

The lawsuit was brought by Ronnie Kahn, a songwriter better known by his Hebrew name Rafael Simcha. According to the lawsuit, he and Carlebach collaborated on Return Again in 1975, with Kahn contributing the English-language lyrics and Carlebach contributing the music and Hebrew-language lyrics. But Kahn’s collaboration was not acknowledged by Carlebach’s two daughters, Neshama as well as Nedara Carlebach, who according to the complaint excluded his name when they registered the work with the Copyright Office in 2006.

Kahn sued the two daughters for a declaration of co-authorship, copyright infringement, and an order that would correct the 2006 registration record within the Copyright Office. The two daughters moved to dismiss the complaint, leading to this opinion.

Declaratory judgment regarding co-ownership. The court denied the daughters’ motion to dismiss this cause of action. The dispute appeared largely to be about the nature of the songwriter’s legal claim. The 2006 registration was allegedly a repeat of an earlier registration in 1976 that listed both songwriters. The daughters argued that Kahn was improperly suing over the 1975 registration, not the 2006 registration. But that was not how the court read the complaint. Although the songwriter’s allegations may not have been “a model of clarity when it comes to articulating causes of action,” the court observed, it was clear that he was seeking a declaration of co-authorship only for the song that was registered in 2006—a song that, he alleged, was identical to the 1975 version. The claim could therefore move forward, the court held.

Copyright infringement. But while the songwriter’s joint ownership claim could go forward, the court held, his copyright infringement claim could not. There was a very simple reason for that, the court held: co-authors simply cannot sue one another for copyright infringement. Nor could the songwriter claim sole ownership of merely the English language lyrics that he contributed, the court noted. Courts have long viewed a song as a “paradigmatic examples of joint work,” the court observed, and have made clear that “words and music combine into a single joint work.” The songwriter might be entitled to demand an accounting of profits from the heirs of his co-author, but could not sue them for infringement.

Correction of Copyright Office filing. The songwriter also could not prevail on his bid to correct the 2006 registration document on file with the Copyright Office. The claim failed on two grounds. First, the court noted, the songwriter’s claim was premised on the claim that the 2006 registration was a fraudulent “renewal” of the 1975 registration. But the 2006 registration could not have been a renewal of the 1975 registration, the court noted, because pre-1976 copyrights (at least those whose initial terms have ended after 1992) renew automatically. Thus, if anything, the court reasoned, the 2006 document was simply a new registration. Second, even if the 2006 registration were indeed a fraudulent renewal of the 1976 registration, the court observed, there was no basis upon which the court could order the Copyright Office to change its records. “Nothing in the Copyright Act, nor any other federal statute, grants federal courts the power to cancel or nullify a copyright registration,” the court noted. Thus, the court reasoned, “there is nothing for the Court to correct.”

The Case is No. 19-CV-3855.

Attorneys: Samuel Ollunga (Thomson Ollunga LLP) for Ronnie Kahn. Hillel Ira Parness (Parness Law Firm, PLLC) for Neshama Carlebach.

Cases: Copyright NewYorkNews