Copyright Law: Spring 2006 Professor Susanna Fischer CLASS of March 21, 2006.

Copyright Law: Spring 2006Professor Susanna Fischer

CLASS of

March 21, 2006

CHANGE IN DURATION

• What basic change did the 1976 Act introduce for duration? Why did it change the law?

DURATION PROVISIONS

• Published and unpublished works created on or after 1/1/78: s. 302, 305

• Unpublished works created but not published prior to 1/1/78: s. 303, s 305

• Published works created pre 1/1/78 : s. 304

DURATION

• S. 303

• Unpublished works created before 1/1/78

• What is the copyright term?

• What are special provisions on expiration?

• Why do you think these provisions are in the Act?

DURATION:1909 Act Works

• S. 304• What is the copyright duration for a work created

in 1910 under the 1976 Act?• What about the copyright duration for a work

created in 1930?• What about the duration for a work created in

1970?• What about the duration for a work created in

1980?

WRAP UP POINTS: DURATION

• 1976 Act changes system of duration to life plus term of years

• For works published prior to Jan 1, 1978, 1976 Copyright Act has retained 2 year system of copyright duration

• 1998 Sonny Bono Term Extension Act amends to add 20 years more. This was challenged in Eldred v. Ashcroft.

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.

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?

Renewals and Derivative Works

• Does copyright in unpublished screenplay have a separate copyright to motion picture?

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?

• 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 

Marvel Characters v. Simon

• Does a settlement agreement that a work was created for hire constitute any agreement to the contrary under s. 304(c)(3)(5) that can be disavowed under the statute?

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 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 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© • 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 overrule La Cienega.

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?