La Cienega Music Co. v. ZZ Top

Opinion by Judge O’SCANNLAIN; Partial Concurrence and Partial Dissent by Judge FERNANDEZ.

We must decide whether the sale of an unregistered recording constitutes “publication” for copyright purposes.

I

In its copyright infringement suit against the Texas blues-rock band “ZZ Top” and others, La Cienega Music Company (“La Cienega”) accuses them of plagiarism in the composition of the song “La Grange” — which the band wrote and recorded over twenty years ago. The song, which is ZZ Top’s signature song, has had global circulation as a phonorecord, has been recorded by other prominent artists, has been prominently featured in a national television advertising campaign, and has been performed at thousands of ZZ Top concerts.

In 1948, John Lee Hooker and Bernard Besman wrote a musical composition called Boogie Chillen. A recording of the song was sold to the public later that year and eventually up to one million copies were sold. Later, Hooker assigned his rights in the composition to Besman, who now is the sole proprietor of La Cienega. Besman registered Boogie Chillen with the Copyright Office in 1967.

Hooker and Besman wrote a second version of Boogie Chillen in 1950. Besman…

concurring and dissenting:

I agree with Parts I and with much of Parts III and IV of the opinion. I do not, however, agree with Part II nor, of course, with the conclusions in Parts III and IV which are influenced by the majority’s conclusion in Part II.

My difficulty with Part II is with its construction and rejection of Rosette v. Rainbo Record Mfg. Corp., 354 F.Supp. 1183 (S.D.N.Y.1973), affirmed, 546 F.2d 461 (2d Cir.1976), and with its concomitant explication of copyright law.

While Rosette may present some difficulty, it does grapple with the conundrum posed by White-Smith. See White-Smith Music Pub. Co. v. Apollo Co., 209 U.S. 1, 17-18 , 28 S.Ct. 319, 323 , 52 L.Ed. 655 (1908). If a record (or piano roll) is not a copy of the underlying *817 work, how can it result in publication of that work? See Corcoran v. Montgomery Ward & Co., Inc. 121 F.2d 572, 573-74 (9th Cir.) (records treated like piano rolls), cert. denied, 314 U.S. 687 , 62 S.Ct. 300 , 86 L.Ed. 550 (1941). Rosette held that because a record is not a copy, it is not a publication. 354 F.Supp. at 1191-92 .

In that, I think Rosette was quite logical, indeed correct. 2 I think it takes some very fancy footwork…