Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co.
145 F.3d 481 (1998)
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Rule of Law:
When a license grants broad rights to use a copyrighted work in a particular medium, such as a "motion picture," that grant is presumed to include the right to distribute the work through new technological formats of that medium, unless the licensor expressly reserves such rights.
Facts:
- In 1938, the Walt Disney Company sought permission from composer Igor Stravinsky to use his composition, "The Rite of Spring," in its film "Fantasia."
- Because the work was in the public domain in the United States, Disney primarily needed the license for distribution in foreign countries where Stravinsky held a copyright.
- In January 1939, Stravinsky signed an agreement for $6,000, granting Disney the "nonexclusive, irrevocable right... to record in any manner, medium or form" the composition for use in "one motion picture."
- The agreement contained a clause reserving to Stravinsky all rights not specifically granted and another clause conditioning the right to record on the film's performance in theaters licensed by ASCAP or a similar performing rights society.
- In 1940, Disney released "Fantasia," featuring a shortened and reordered version of Stravinsky's work, and exhibited it in theaters for over five decades.
- In 1947, Stravinsky assigned his copyright for the work to Boosey & Hawkes Music Publishers Ltd.
- In 1991, Disney began releasing and selling "Fantasia" in video format (videocassettes and laser discs) in the United States and foreign countries.
Procedural Posture:
- Boosey & Hawkes Music Publishers Ltd. (Boosey) sued The Walt Disney Company (Disney) in the U.S. District Court for the Southern District of New York.
- The complaint included claims for copyright infringement, breach of contract, and violations of the Lanham Act.
- On cross-motions for summary judgment, the district court granted partial summary judgment to Boosey, declaring that the 1939 license did not authorize video distribution because it violated the 'ASCAP Condition'.
- The district court also granted summary judgment to Disney, dismissing Boosey's claims for breach of contract and Lanham Act violations.
- Additionally, the district court dismissed Boosey's foreign copyright infringement claims under the doctrine of 'forum non conveniens'.
- Disney appealed the declaratory judgment against it to the U.S. Court of Appeals for the Second Circuit.
- Boosey cross-appealed the dismissal of its other claims to the U.S. Court of Appeals for the Second Circuit.
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Issue:
Does a 1939 license granting the right to use a musical composition in a "motion picture" and to record it "in any manner, medium or form" include the right to distribute that motion picture in new formats like videocassettes and laser discs that were not commercially viable at the time of the agreement?
Opinions:
Majority - Leval, Circuit Judge
Yes, a 1939 license granting the right to use a musical composition in a 'motion picture' and record it 'in any manner, medium or form' includes the right to distribute that motion picture in new formats like videocassettes. The court, applying the precedent set in Bartsch v. Metro-Goldwyn-Mayer, Inc., reasoned that broad license language should be read to include new uses that reasonably fall within the described medium. The phrase 'to record in any manner, medium or form' is broad enough to encompass video recording, and the distribution of a motion picture in video format is a new method of distributing a motion picture. The court held that the burden falls on the grantor (Stravinsky) to negotiate for an exception or reserve rights to future technologies; otherwise, the licensee (Disney) can rely on the broad grant. The court rejected the notion of favoring licensors over licensees, advocating for neutral principles of contract interpretation. The general reservation clause was deemed a mere truism that did not narrow the scope of the rights that were granted. However, the court found the ASCAP Condition ambiguous and remanded that part of the case for trial to determine its meaning and effect.
Analysis:
This decision reaffirms and solidifies the Second Circuit's 'new use' doctrine established in Bartsch, creating a strong, licensee-friendly presumption. It places the burden squarely on creators and licensors to anticipate future technologies and explicitly reserve rights if they wish to control or profit from them separately. This ruling provides greater certainty for licensees seeking to exploit works through new distribution channels and discourages litigation based on ambiguous grants of rights. It significantly impacts the interpretation of older media contracts in the face of rapidly evolving technology by favoring a broad reading of the original grant.
