COPYRIGHT LAW SPRING 2002 CLASS 17 March 22, 2002

GOALS FOR CLASS To learn the length of duration of the copyright term To learn about provisions for renewal terms under the 1909 Act so that you understand the extent to which they survive under the 1976 Act.

GOALS FOR CLASS To learn about termination of transfers To learn about formalities (publication, notice, deposit, registration)

WRAP UP POINTS: DURATION 1976 Act changes system of duration to life plus term of years 1998 Sonny Bono Term Extension Act amends to add 20 years more. Some argue not constitutional For works published prior to Jan 1, 1978, 1976 Copyright Act has retained 2 year system of copyright duration

WRAP UP POINTS: RENEWAL For works published prior to Jan. 1, 1964, the author had to file a renewal registration in CO in 28th year or work fell into public domain 1992 the 1976 Act amended to provide for option of automatic renewals for works published between 1964 and 1977

MORE RENEWAL WRAP UP POINTS Author can assign rights in renewal term before rights vests and such assignments will be binding on author Limit on author’s right to assign renewal term - must survive until renewal term vested Case law unclear about when in 28th year renewal term vested

MORE WRAP-UP POINTS ON RENEWAL TERM Under automatic renewal provisions, renewal vests on either of 2 dates - when registration filed or if no registration filed, at beginning of renewal term.

STEWART V. ABEND (1990)

STEWART v. ABEND (1990) Supreme Court holds that proprietors of derivative works are limited in exploitation they can make of those works following reversion in renewal term of underlying work on which derivative work is based.

LIMITS ON ABEND 1. Underlying work must have been subject to copyright prior to 1/1/78 2. Underlying work must have been written outside work for hire relationship 3. Renewal term must not have been effectively conveyed - eg author dies prior to vesting of renewal term 4. Renewal claimant must timely file renewal application - see s. 304(a)(4)(A)

RUSSELL V. PRICE (9th Cir. 1979) Shaw registers copyright in 1913 Renewal copyright extended to 1988 Shaw dies in 1950 What is issue for court? What is public policy dilemma here?

TERMINATION OF TRANSFERS This applies to 1976 Act Why did Congress provide for a right of termination?

TERMINATION Applies to 2 situations 1. Right of recapture for works created after January 1, 1978 (life plus 50, now 70 yardstick) - SECTION Works already in copyright under 1909 act to which author/statutory successor had conveyed 28 year renewal term. Who gets extended renewal term (extra 19, now 39 years?) - SECTION 304(c)

TERMINATION UNDER SECTION 203 Not automatic must follow procedure established by statute can’t waive or assign away termination right in advance

WHAT GRANTS ARE COVERED?

SECTION 203: WHAT GRANTS ARE COVERED? Applies to transfers or licenses of copyright or any right under copyright on or after 1/1/78 By author Of any right under any copyright DOES NOT APPLY TO TRANSFERS/LICENSES OF RIGHTS IN WORKS MADE FOR HIRE also not dispositions by will

WHO CAN TERMINATE? Author If joint work, majority of authors who executed grant If author dead, majority of statutory owners of his termination right (no need for unanimous consent - compromise) If one of many authors is dead, then termination interest of that author is exercised as a unit by statutory owner(s) of termination right

OWNERSHIP OF SHARES: TERMINATION INTERST Widow/widower and no kids - W owns 100%. If kids only they own 100% If both widow and kids, W 50% and K 50% Rights of kids and grandkids are exercised PER STIRPES That is, K take share parents would have taken & int of dead child can only be exercised by majority of surviving kids If author, widow/er, kids, grandkids all dead, then executor or administrator, personal rep or trustee owns termination interest

EXAMPLE Author is deceased Has widow and 3 kids, 1 deceased REMEMBER THAT MAJORITY INTEREST NEEDED Can W and K1 terminate? What if W wants to terminate but K1 and K2 don’t, How many grandchildren must agree to terminate?

WHEN DOES TERMINATION TAKE PLACE?

At any time for period of five years starting at end of 35 years from date of execution of grant grant OR if grant covers publication right, period starts either 35 years from publication or 40 years from grant, whichever ends earlier

HOW DO YOU TERMINATE?

Serve written notice on grantee - vests when served Must be served between 2 and 10 years before effective date of termination Must state effective date of termination & it must be correct Must comply with CO regulations in 37 CFR Copy of notice must be recorded in CO before effective date of termination

EFFECT OF TERMINATION?

All rights revert to those having right to terminate What about derivative works prepared before termination? Can new derivative works be prepared after date of termination?

FURTHER GRANTS Who can make further grants?

SECTION 304(c) Governs transfers of renewal interests made before 1/1/78 Thus, allows author and family right to recover 19 (now 39) years of extended renewal term

S. 304(c): WHAT GRANTS?

Grants executed before 1/1/78 for copyrights in first or renewal term on 1/1/78 Not works made for hire Not dispositions by will

EXAMPLE Novel copyrighted in 1940 In 1960 author assigns expectency in renewal term to movie studio. Author survives vesting of renewal term. Author and heirs could reclaim extended renewal term for 19 years If fail to do so get second bite of apple for second renewal term

SECTION 304(c): WHO CAN TERMINATE?

Same as for 203 if grant made by author (per stirpes rules and all) If grant made by another, then by surviving grantors

EFFECTIVE DATE OF TERMINATION?

5 year period beginning at end of 56 years from date copyright protection originally secured or, beginning on Jan. 1, 1978 whichever is later 304©(3) OR if failed to exercise right of termination, during 5 year period beginning at end of 75 years from date of copyright 304(d)

HOW DO YOU TERMINATE?

Serve written notice on grantee or successor in title If grant executed by s/o other than author everyone who executed grant must sign notice Must serve between 2 and 10 years before effective termination date Must comply with CO regs and be recorded in CO before effective date of termination

EFFECT OF TERMINATION?

All rights revert to those having right to terminate Derivative works can continue to be exploited under terms of grant No new derivative works can be prepared after termination date Termination rights vest when notice served

WHO CAN MAKE FURTHER GRANTS? 304(c)(6) - each owner of a right which has reverted after termination of a transfer made by author’s successor-in-interest becomes a tenant in common entitled to deal separately with the right. If author dead, then further grants must be made by majority action (per stirpes) as to author’s share