Copyright Law: Fall 2006 Professor Susanna Fischer CLASS 16 October 16, 2006

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 non-exclusively 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, some courts have applied a 2 pronged test to determine whether there is joint ownership (Childress, Thompson), namely A P trying to establish co-ownership must establish: 1. Each putative co-author made independently copyrightable contributions to work (doubted in Gaiman) 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

Aalmuhammed v. Lee (9th Cir ) Did the court agree with Aalmuhammed’s contention that Malcolm X was a joint work? Why or why not?

Aalmuhammed v. Lee (9th Cir ) Is the intention test as applied in Thomson and Aalmuhammed fair? Does it promote the policies of the Copyright Clause?

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.

Exclusive Licensee’s Rights Include right to bring action for copyright infringement This right does not extend to nonexclusive licenses (see, e.g. BMI, Inc. v. CBS, Inc., 421 F. Supp. 562 (S.D.N.Y. 1976) (BMI and ASCAP have not standing to sue for infringement of the public performance right under 106(4))

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.

Gardner v. Nike, 279 F.3d 774 (9 th Cir. 2002) Transferee (Sony) of an exclusive copyright license (to a Nike cartoon character) could not transfer rights to Gardner w/o consent of Nike)

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.

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).

Invalid License? Gray requests permission from Leonardo to include Leonardo’s drawings in Gray’s anatomy book.. Leonardo orally tells Gray to go right ahead. Gray’s book becomes the standard work for medical students, and Leonardo now wants royalties. Leonardo admits he gave oral permission, but contends it is inadequate. Gray says it is. Who should succeed?

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.

Another hypo What if Gray sought the exclusive right to use Leonardo’s drawings in the book. Leonardo unequivocally gave oral permission to Gray to use the drawings in the book. Can Gray therefore successfully argue that since Leonardo doesn’t deny he gave permission, no writing is needed to validate the exclusive license?

Effects Associates v. Cohen, 9 th Cir (CB p. 347) Explain the argument that is summarized as “Moviemakers do lunch, not contracts.” Did Judge Kozinski view this as a valid argument?

Transfer of copyright ownership Includes exclusive licenses, but not nonexclusive licenses Includes sales of copyright, grant of exclusive copyright rights, use of copyright as collateral (security interest) for a loan (hypothecation) Is broadly defined to include even partial or contingent transfers of ownership

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.

Foraste v. Brown U., 290 F. Supp.2d 234 (D.R.I. 2003) Brown U. policy provides: It is the University’s position that as a general premise, ownership of copyrightable property which result from performance of one’s University duties and activities will belong to the author or originator. This applies to books, art works, software, etc.” Does the policy operate to transfer Brown employee Foraste’s photographs taken in the scope of his employment for Brown?

Adquate “note or memorandum of transfer”? Do exchange of faxes confirming a transfer but failing to give information about the transfer meet writing requirement? Radio TV Espanola S.A. v. New World Entertainment, Lrd. (9 th Cir. 1999) ; Lyrick Studios, Inc. v. Big Idea Prods., Inc. 420 F.3d 388 (5 th Cir. 2005)

Note or Memorandum Requirement No special form of words is required But writing must be enough to show that the parties actually agreed to convey rights in the copyright Only a note or memorandum of the agreement suffices – not all the terms must be in, but the key terms must be

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 $95 for document containing no more than 1 title, $25 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 MAY PREVAIL IF RECORDED FIRST

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.