COPYRIGHT LAW FALL 2006 Columbus School of Law The Catholic University of America Prof. Fischer Class 19: Termination and 1909 Act Formalities – October 25, 2006

WRAP-UP: DURATION You should be able to calculate the copyright term for works published with copyright notice prior to the effective date of the 1976 Copyright Act as well as works created on or after the effective date of the 1976 Act.

Termination of transfers This applies to 1976 Act Why did Congress provide for a right of termination? Note – transfers include non-exclusive and exclusive licenses and transfers

Termination: Paternalistic Policy The termination provisions in the 1976 Act serve the same function as the renewal provisions in the 1909 Act, namely the paternalistic purpose of protecting authors from unremunerative transfers.

Termination of transfers 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), 304(d)

Questions for each type of termination? What grants are covered? Who can terminate? When does termination take place? How do you terminate? What is the effect of termination? Who can make further grants?

WHAT GRANTS ARE COVERED S. 203? Lucinda writes a copyrightable poem in Jan and validly assigns all rights in the poem to her daughter Mimi in Feb Covered under 203? What if Lucinda’s poem was created in 1967 but she assigns rights in Feb. 2003? What if Lucinda makes no assignment to Mimi but L. dies on Feb. 15, 2003 and bequeaths all her copyrights to Mimi under her will? Can any rights be terminated by anyone?

S. 203 : COVERED GRANTS 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 UNDER s. 203?

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 Rights of kids and grandkids is exercised per stirpes – what does that mean?

OWNERSHIP OF SHARES IS PER STIRPES 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

Examples Lucinda, author of published poem assigns all rights in poem to Bob on Jan. 1, L. dies on Feb L. leaves a widower, Henry, and 3 kids, Anna, Barbara, and Caroline. Caroline died in 1999 with no children. REMEMBER THAT MAJORITY INTEREST NEEDED Can Henry and Anna terminate?

Examples What if Henry wants to terminate but Anna and Barbara do not; Caroline (died in 1999) had 3 kids. How many of the grandchildren must agree to terminate?

When Does Termination Take Place under 203?

When Does Termination Take Place under s. 203? At any time for period of five years starting at end of 35 years from date of execution of grant – so in L’s case anytime between Jan. 1, 2038 and Dec. 31, 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 under s. 203? Let’s assume, for simplicity’s sake, that Lucinda only had a husband, Henry who survived her. How does Henry terminate the assignment to Bob?

How Do You Terminate under s. 203? 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 under s.203?

All rights that were conveyed under the grant revert to those having right to terminate – vest as of the date notice of terminaion was served and vest in same shares as termination right divided (per stirpes) What about derivative works prepared before termination? These can be used after the termination subject to terms of the grant. 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 years of extended renewal term 304(D) allows you to get back additional 20 years extended by Sonny Bono Act if 304(c) termination rights expired prior to effective date of that act….

TERMINATION EXAMPLE Annie publishes novel in 1935 Annie assigns rights in renewal expectency to movie company & survives after 1963, when renewal vests. Annie has no rights in renewal term – she has given it away If Annie terminates under 304(c) she can reclaim extra 19 years of copyright term under 1976 Act Even if she doesn’t terminate under 304(c) she can recover extra 20 years (granted by Sonny Bono extension act) under 304(d)

TIMING 1935 work published 1963 copyright renewed 1991 second term ends and 19 year first termination period begins 304(c) year second termination period begins 304(d) 2030 copyright ends - work falls into public domain

304(c): What Grants? Grants executed before 1/1/78 for copyrights in first or renewal term on 1/1/78 – only grants covering interest in the renewal term. 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

Who can terminate –304(c) Same as for 203 if grant made by author (per stirpes rules and all) If grant made by another, then by surviving grantors

304(c): 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(c)(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?

Marvel Characters, Inc. v. Simon (2d Cir. 2002) CB p. 452 If the settlement agreement was an “agreement to the contrary” what effect would that have on Simon’s ability to terminate? Was it an agreement to the contrary?

Formalities U.S. very stringent pre 1976 Act (effective 1/1/1978) and 1988 BCIA (came into effect 3/1/1989) Pros and cons of strict formalities Publication with notice divestive and investive publication

1909 Act: PUBLICATION 1909 Act did not define publication Case law determined when publication had taken place

1909 Act: PUBLICATION Was Public performance was not a publication under old law Was sale of records publication under old law? Until La Cienega distribution of phonorecords (sale of records) was held not to be a divestive publication. La Cienega held otherwise. As a result of that ruling, Congress added section 303(b) to the 1976 Act by amendment to overrule La Cienega.

1909 Act: PUBLICATION Until La Cienega Music Co. v. ZZ Top, (9 th Cir. 1995) distribution of phonorecords (sale of records) was held not to be a divestive publication. La Cienega held otherwise. As a result of that ruling, Congress added section 303(b) to the 1976 Act by amendment to overrule La Cienega.

Section 303(b) The distribution before January 1, 1978, of a phonorecord shall not for any purpose constitute a publication of the musical work embodied therein.

Notice Requirement Section Act Any person entitled thereto by this title may secure copyright for his work by publication thereof with the notice of copyright required by this title; and such notice shall be affixed to each copy thereof published or offered for sale in the United States.”

Form of Notice under 1909 Act

Section Act What if the notice did not comply with form and location requirements? What if it was omitted altogether? Effect of s. 21

Estate of Martin Luther King, Jr. Inc. v. CBS, Inc. (11 th Cir. 1999) Appeal against grant of CBS motion for summary judgment Did 11 th Circuit agree with district court that the performance of Dr King’s I Have a Dream speech could only be seen as a divestive general publication? Why or why not?

1909 Act: PUBLICATION 1909 Act did not define publication Case law determined when publication had taken place Public performance was not a publication under old law Until La Cienega distribution of phonorecords (sale of records) was held not to be a divestive publication. La Cienega held otherwise. As a result of that ruling, Congress added section 303(b) to the 1976 Act by amendment to overrule La Cienega.