COPYRIGHT LAW 2004
Columbus School of Law
The Catholic University of America
Prof. Fischer
March 15 2004
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 203
• 2. 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)
Questions for each type of
termination?
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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.
2003 and validly assigns all rights in the poem
to her daughter Mimi in Feb. 2003. 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
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 poem assigns all
rights in poem to Bob on Jan. 1, 2003.
L. dies on Feb. 1 2003.
• L. leaves a widower, Henry, and 3 kids,
Anna, Barbara, and Caroline. Caroline
died in 1999.
• REMEMBER THAT MAJORITY
INTEREST NEEDED
• Can Henry and Anna terminate?
Examples
• What if Henry wants to terminate but
Anna and Barbara do not; Caroline 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, 2043.
• 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
201.10
• Copy of notice must be recorded in CO before
effective date of termination
Effect of Termination under
s.203?
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
TIMING
• 1935 work published
• 1963 copyright renewed
• 1991 second term ends and 19 year first
termination period begins 304©
• 2010 20 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?
• 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
•
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
WRAP-UP: PUBLICATION
AND NOTICE:
• Under the 1909 Act, if a work was not
published with copyright notice it would be
injected into the public domain
• It could also be injected into the public domain
for failure to comply with other formalities like
renewal
• 1976 Act does not bring works back into
copyright
• If unpublished pre-1976 act work may still be
protected under s. 303
WRAP-UP: PUBLICATION
AND NOTICE:
• 1976 Act liberalized notice provisions
and provided for copyright on creation
not publication
• Accession to Berne Convention: notice
becomes optional (as of March 1,
1989)
LIMITED PUBLICATION
• To ease the harshness of the 1909 rule
requiring publication with proper notice,
courts developed a doctrine called limited
publication.
• A limited publication was a publication that
did not have the divestive effect of a general
publication.
• Martin Luther King Case
TEST FOR GENERAL
PUBLICATION
• In MLK case p. 391 of CB
• 1. If tangible copies of the work are
distributed to the general public in such a
manner as allows the public to exercise
dominion and control over the work.
• 2. If the work is exhibited or displayed in
such a manner as to permit unrestricted
copying to the general public.
A Procedural note on MLK case
• Remember that this is at the summary
judgment stage.
• Court reverses district court’s grant of
summary judgment to CBS
• But 11th Circuit notes that there is some
evidence supporting a general publication,
just not enough to establish, beyond any
genuine issue of material fact, that Dr. King
made a general publication of his speech
ACADEMY OF MOTION PICTURE
ARTS & SCIENCES V. CREATIVE
HOUSE PROMOTIONS, INC. (9th Cir.
1991
• Was distribution of Oscar
statues without copyright
notice prior to 1941 a
general publication?
• Why or why not?
• NOTE THE
COPYRIGHT NOTICE
ON THIS MORE
MODERN OSCAR!
PUBLICATION UNDER 1976
ACT
• NOW THERE IS A DEFINITION
• Why do we still care about publication now
that copyright arises from “creation” of
works?
• What does this say about distribution of
photograph records after 1/1/78?
Publication: Section 101
• The distribution of copies or phonorecords of a
work to the public by sale or other transfer of
ownership, or by rental, lease or lending. The
offering to distribute copies or phonorecords to a
group of persons for purposes of further
distribution, public performance or public
display, constitutes publication. A public
performance or display of a work does not itself
constitute publication.
CHANGES TO NOTICE
REQUIREMENTS IN 1976 ACT
(PRE-BERNE)
• Prior to Berne could you omit copyright
notice and not lose copyright protection for
the work?
• What provision(s) of the Copyright Act is
relevant?
• What if you made mistakes in the notice?
BERNE CHANGES NOTICE
REQUIREMENTS
• The Berne-implementation amendments
changed the 1976 Act to eliminate
copyright notice as a precondition to
copyright protection.
• To what works do the Berne amendments
apply?
NOTICE AFTER BERNE
• If you want to put a copyright notice on a
work what must it consist of?
• Where should you put the notice?
• Do you have to put notice on?
• How about for phonorecords?
• What incentives are there in the law to
include a copyright notice?
DEPOSIT REQUIREMENTS
• NOTE THAT BERNE PRIMARILY AFECTED
PUBLICATION NOT
DEPOSIT/REGISTRATION REQUIREMENTS
• What is the deposit requirement for the Library
of Congress? See section 407
• What is the effect of section 408? How does it
differ from the deposit required under section
407?
REGISTRATION
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•
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Who can register a work?
What works can be registered?
When can you register?
What’s the purpose of the registration fee? ($30
more for works)
• How do you register? See Form TX (for non
dramatic literary works at CB p. 409)
• Do you have to register to sue for infringement?
• What incentives exist to register? See s. 412