Articles

Dead Man's Statute in Copyright Actions: Dead Men Sell No Tales

By Robert Clarida

Dec. 17, 2001

Although the current Copyright Act requires assignments and exclusive licenses to be in writing and signed by the author,¹ infringement litigations can turn on an author's past oral statements. A defendant may, for example, claim to have been granted a non-exclusive oral license or a pre-1978 oral assignment of the author's common-law copyright. Either would be a complete defense to infringement, but if the author is able to testify to the contrary such asserted defenses can be easily rebutted.

What happens when the author is no longer living? Can the defendant simply rest on an assertion that the deceased author granted an oral assignment or license? The courts have not offered a consistent analysis of this issue, but at least in New York the so-called Dead Man's Statute (N.Y. CPLR § 4519) appears on its face to provide a basis for precluding such defenses, even in federal copyright actions.

The New York statute, like those in several other states, provides that an interested witness, such as our hypothetical defendant, cannot testify regarding a transaction with a deceased person unless 'the testimony of the deceased person is given in evidence, concerning the same transaction or communication.' There is no federal Dead Man's statute, however, and even where the state law clearly precludes the testimony, as in New York, it may not be applicable in a federal copyright litigation. Rule 601 of the Federal Rules of Evidence provides that even an interested witness is competent to testify about such transactions as a general matter, unless state law precludes the testimony 'with respect to an element of a claim or defense as to which state law supplies the rule of decision.'

The question then becomes: when does state law supply the 'rule of decision,' and as to what 'claim or defense'? The federal courts have fashioned several inconsistent approaches. One line of authority holds that state Dead Man's statutes apply only in diversity cases, not in cases where jurisdiction is premised on the existence of a federal question.

Other cases permit the application of state Dead Man's statutes in federal question cases, like copyright actions, but only with respect to supplemental state claims. Under either of these approaches, our hypothetical defendant would not be precluded from testifying about the deceased author's alleged oral grant of rights.

Yet a third approach was followed by the Second Circuit in Jerry Vogel Music Co. v. Forster Music Publ., Inc., 147 F.2d 614 (2d Cir. 1945). There, the court affirmed a ruling which applied the New York Dead Man's Statute in a copyright action to bar the testimony of a person claiming to be the joint author of a song written by a deceased composer. Even though the case was not a diversity action and presented no pendent claims, state law properly precluded the testimony. As a later Southern District decision explained, the Jerry Vogel result was proper because 'the dispositive issue was whether a common-law property right existed . . . [T]he defense sought to be set up by the testimony was one based on common law, that is a claim of co-authorship.' Courtland v. Walston & Co., 340 F. Supp. 1076 (S.D.N.Y. 1972). In other words, because the defendant asserted a state law defense (common law co-authorship) to a federal claim of copyright infringement, the state law applied.

Under Jerry Vogel, it should therefore follow that any assertion of a defense based on an alleged oral agreement by a deceased author (e.g., as to license terms, assignment or co-ownership) would be subject to the Dead Man's statute, because 'state law supplies the rule of decision' regarding the existence and scope of such an agreement. See, e.g., ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) (validity of asserted non-exclusive copyright license determined under Wisconsin law).

The copyright practitioner representing a plaintiff in an infringement action can thus take steps to counter an anticipated defense based upon oral statements of a deceased author. Although jurisdiction in copyright actions rests on the existence of a federal question and never solely on diversity of citizenship, a plaintiff can assert pertinent state law claims as well, which will permit counsel to make a well-supported argument for invoking the applicable state Dead Man's statute. In addition, characterization of defenses as being matters of common law or state contract law will subject them to the Dead Man's statute under the reasoning of Jerry Vogel. In any case, counsel for defendants in infringement actions should be alert to the existence of a state Dead Man's statute in fashioning their defenses.

¹17 U.S.C. § 204.

 

© 2001 Cowan, Liebowitz & Latman, P.C.

This article appeared in the December 2001 issue
of Intellectual Property Strategist.

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