Copyright Law: Spring 2002 Professor Susanna Fischer CLASS 14 February 27, 2002

GOALS FOR CLASS To learn about transfer of copyright ownership

WRAP UP POINTS: JOINT WORKS A joint work is defined in section 101 as a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole”

WRAP-UP: JOINT AUTHORS Joint authors have 2 rights and 1 obligation Each joint author has the right to use or license the work as he or she wishes Each has an equal and undivided interest in the work Each has the obligation to account to the other joint author for 1/2 profits that are made if the work is licensed

WRAP-UP: INTENTION TEST FOR JOINT WORKS If there is no written agreement between the authors, there is a 2 pronged test to determine whether there is joint ownership (Childress, Thompson) A P trying to establish co-ownership must establish: 1. Each putative co-author made independently copyrightable contributions to work 2. Each putative co-author fully intended to be a co-author

MORE ON INTENTION TEST The joint work intention test is not just SUBJECTIVE. You must look at the relationship -- e.g. how the collaborator regarded herself in terms of billing and credit, decisionmaking, and right to enter into contract

TRANSFER OF COPYRIGHT OWNERSHIP COPYRIGHT IS A BUNDLE OF RIGHTS - Under the 1976 Copyright Act, the copyright owner can transfer any of these rights separately This principle of divisibility is set out in s. 201(d)(2) (note - this was a change in the law; previous law required only one copyright owner at all times - anyone else was a licensee)

DIVISIBILITY: Section 201(d)(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified in section 106, may be transferred as provided in clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, all of the protection and remedies accorded to the copyright owner by this title.

HOW DO YOU TRANSFER COPYRIGHT INTERESTS? Section 201(d)(1): The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession Jonathan Larson’s copyrights were inherited after his death. See also definition of “transfer of copyright ownership” in section 101

SECTION 101: TRANSFER A transfer of copyright ownership is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of copyright or of any of the other exclusive rights comprised in a copyright whether or not it is limited in time or place of effect, but not including a nonexclusive license.

WRITING REQUIREMENTS FOR TRANSFERS OF COPYRIGHT OWNERSHIP? Does the Copyright Act of 1976 require transfers of copyright ownership to be in writing?

204: Execution of Transfers of Copyright Ownership (a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. Do you have to notarize such transfers? See section 204(b).

SUMMARY: WRITING REQUIREMENTS FOR EXCLUSIVE LICENSES Section 204 requires either : “note or memorandum of the transfer” or transfer by operation of law Why require a writing?

SUMMARY: WRITING REQUIREMENTS FOR EXCLUSIVE LICENSES Section 204 requires either : “note or memorandum of the transfer” or transfer by operation of law Why require a writing? See Effects v. Cohen - idea is to ensure that no one will inadvertently give away copyright; also require clarity about what rights are being given away and at what price. Enhance predictability and certainty.

TRANSFER BY OPERATION OF LAW COMPARE: CB p. 335 CA In re Marriage of Susan M. & Frederick L. Worth (1987) WITH LA Rodrigue v. Rodrigue (2000) [CAN state community property laws step in to enforce sharing of copyright?]

HYPOTHETICAL Novelist Neil wants to give Thea Translator the exclusive right to make a translation into Italian. Neil tells Thea he is giving her an exclusive license. Is that license valid? Why or why not? What are the benefits of an exclusive license as opposed to a nonexclusive license - see BMI v. CBS (S.D.N.Y. 1983) (p. 299), s. 501(b)

HYPOTHETICAL What are the benefits of an exclusive license as opposed to a nonexclusive license - see BMI v. CBS (S.D.N.Y. 1983) (p. 299), s. 501(b) An exclusive licensee has the right to bring an action for copyright infringement; a nonexclusive licensee does not. BMI had no standing to sue as it was a nonexclusive licensee. What problem does this create for BMI?

BMI v. CBS (S.D.N.Y. 1976) Court did recognize that its decision created a practical problem for BMI - it might be hard to join a large number of music publishers if lots of different songs were allegedly infringed. So court suggested that BMI might seek to have publishers declared a plaintiff class under Rule 23 of the FRCP.

EFFECTS V. COHEN (9th Cir. 1990) What is the Stuff and what food does it resemble? What was the copyrighted work created by Effects Associates and who commissioned it?

EFFECTS V. COHEN (9th Cir. 1990) Did Larry Cohen and Effects enter into a written contract? On what basis did Cohen claim copyright ownership? Could it be a work made for hire? An exclusive license? A nonexclusive license?

“Moviemakers do lunch, not contracts” Section 204’s writing requirement DOES apply to this situation (Hollywood executives are not exempted despite custom of the trade argument) Section 204 does not apply to nonexclusive licenses. Court implies a nonexclusive license on the basis that contribution was not of minimal value since Cohen paid almost $56,000 for it.

Did Effects have any recourse?

Effects could bring a suit for breach of contract in state court Effects could also assign or license its remaining rights in the special effects footage (though perhaps not worth much given the movie’s quality) All Effects gave up was one little twig of its bundle of copyright rights: the right to sue Cohen for copyright infringement

You Be the Judge Is Effects a good decision? Why or why not?

Recordation System What is recordation?

Recordation System What is recordation? It is a voluntary system permitting transfers of copyright ownership to be recorded with the Copyright Office. How do you record a transfer?

Recording a Transfer You file EITHER the original transfer OR (more often) a copy that is accompanied by a sworn certification that it is a true copy of the original transfer You PAY - fee is currently $50 for document containing no more than 1 title, $15 for additional titles (per group of 10 titles)

Recordation as constructive notice (section 205) Recordation operates as constructive notice (so long 2 conditions are met: work is specifically identified and there is a registration of copyright for the work) - 205(c) Recordation gives transferee priority over later transfers - 205(d)

Priority Between Conflicting Transfers First transfer prevails if recorded within one month after execution in US or within 2 months after execution after US OR at any time before recordation of second transfer OTHERWISE LATER TRANSFER PREVAILS

Priority between conflicting transfer and nonexclusive license Section 205(e) : Nonexclusive license, whether recorded or not, prevails over conflicting transfer of copyright ownership IF license evidenced by written instrument signed by copyright owner or authorized agent AND license taken before transfer executed OR license taken in good faith before recordation of transfer and without notice of it.