The "Fantastic Four" of Copyright Recapture

The “Fantastic Four” of Copyright Recapture:

Registration, Grant, Notice, and Recapture

www.TheKellerLawFirm.com

Presented By: Kelley Clements Keller, Esq.

The “Fantastic Four” of Copyright Recapture

• (1) Registration of Copyright• (2) Grant of Rights to Copyrighted Work• (3) Notice of Termination• (4) Recapture of Rights to Copyrighted

Work


* Images may be subject to copyright by a third party.

®

Let’s Start at the Beginning

• What is a Copyright?

• “Copyright protection subsists in original works of authorship fixed in any tangible medium”

• Rights Arise Under Common Law• Rights May be Broadened through Federal

Registration (Article 1, Sec. 8, Cl. 8, US Const.)

You can’t own an idea, just the tangible expression of it.


Exclusive Rights of aFederal Copyright Registration

• Reproduce the work in copies• Prepare derivative works based upon

the work• Distribute copies of the work to public• Perform the work publicly• Display the work publicly



Legal Remedies AccompanyingCommon Law Copyrights

• Protection is limited to the geographic area in which the copyrighted material is published and used

• No automatic federal jurisdiction


• Statutory Remedies

• Actual Damages • Statutory Damages• Injunctive Relief• Impoundment or Destruction of

Infringing Works• Cost of Suit and/or Attorneys’ Fees


Legal Remedies AccompanyingFederal Copyright Registrations


• (1) REGISTRATION:

• Artists and Authors must first register their eligible works for copyright protection


Registration


• What are Eligible Works?

• Literary works• Musical works• Dramatic works• Pantomimes and choreographic works• Pictorial, graphic, and sculptural works• Motion pictures, other audiovisual works

and sound recordings



Registration

Grant

• (2) GRANT:

• Once a copyright registration is received, the Artist and Author may grant his or her rights to a Performing Rights Organization (PRO) or Publisher

• These PROs and Publishers collect fees from businesses that purchase/use the works

• The fees collected are paid as royalties to the Artists and Authors


Notice

• (3) NOTICE:

• According to the Copyright Act of 1976, an Artist or Author can terminate his or her grant after 35 years with proper notice to the grantee

• Given the life of a copyright, it can be transferred and recaptured multiple times


Recapture

• (4) RECAPTURE:

• By terminating the grant, the Artist or Author will “recapture”, or reclaim, the rights to his or her copyrighted works


Exercising the Termination Right

• How to TERMINATE a Grant:

• Serve a Notice of Termination not less than 2 years or more than 10 years before the specified date of termination

• Notice must fall within the 5-year timeframe following the expiration of the copyright grant

• Record the Notice with the Copyright Office

• The responsibility of terminating a grant lies solely in the hands of the Artist or Author



• What is INCLUDED in the Right:

• Any grant or transfer of a copyrighted work signed by the Artist or Author on or after January 1, 1978 is subject to termination



• What is EXCLUDED from the Right:

• “Works Made for Hire” • “Derivative Works” and “Compilations”• Grants Made by Will• Grants Made by Heirs of Intestate Artists or

Authors


Ramifications of Recapture: Songs

• Can Rights to Sound Recordings (Songs) be Recaptured?

• YES, unless it is specified in a contract that the songs are “works made for hire”

• However, music artists generally foot the bill to produce their music and are usually independent contractors



• Billy Joel, Bruce Springsteen, and Bob Dylan are but a few of 1978’s famous music artists that have the option of recapturing the rights to their songs




• Tom Petty, The Eagles, Village People, Kenny Rogers, and Loretta Lynn also fall into this category




• Can groups like Led Zeppelin, The Rolling Stones, and Pink Floyd exercise the termination right for American recordings?

• Where was the copyright registered?• How were the rights transferred?



• Can Rights to Motion Pictures be Recaptured?

• NO, in the majority of cases• Motion pictures are generally “works

made for hire,” meaning everyone involved in the production is an employee or independent contractor with an appropriate contract in place

• Motion pictures are often “derivative works” based on screen plays as well


Ramifications of Recapture: Movies

• Can Rights to Literary Works be Recaptured?

• YES, unless they fall into the “works made for hire,” “derivative works,” or “compilation” exceptions


Ramifications of Recapture: Books


• Authors of popular books from as early as 1978 may recapture their rights upon expiration of their grants

• The Stand by Stephen King• The World According to Garp

by John Irving




• These children’s books also fall into this category

• A Pocket for Corduroy by Don Freeman• Cloudy with a Chance of Meatballs by Judi

Barrett




Ramifications of Recapture: Comics

• Can rights to fictional characters – think comics - be Recaptured?

• VERY DEBATABLE - Do they fall into the “derivative works” or even “works made for hire” exceptions?

• Fictional characters have the Propensity to …

• Adapt, Transform, and Develop



• Consider the following characters potentially eligible for recapture

• Superman®• Wonder Woman®




• Amazing Spider-Man®• Fantastic Four®• X-Men®• Iron Man®• The Incredible Hulk®• Captain America®




Looking Ahead

• Areas with Minimal Litigation

• Literary Works (Books)• There is generally not much argument as to

where the work originated from, e.g. the Author wrote the book


• Areas with Extensive Litigation

• Sound Recordings (Songs)

• “The four major record companies … have made it clear that they will not relinquish recordings they consider their property without a fight.” (“Record Industry Braces for Artists’ Battle Over Song Rights," New York Times, 15 Aug 2011)



Looking Ahead

• Areas with Extensive Litigation

• Fictional Characters in Comics

• The question of “derivative works” and whether the grant can be terminated will likely be resolved through litigation

• Comic characters share few ties to their creative roots, as compared to more traditional forms of copyrights


Looking Ahead



Looking Ahead: The Wild West – Anything Goes

• Another Cause for Litigation

• Inalienable Right of Recapture: “Termination of the grant may beaffected notwithstanding any agreement to the contrary…”

• If an agreement includes language that bars the recapture of rights 35 years after the grant, it may not be held valid

• “The termination right was expressly intended to relieve authors of the consequences of ill-advised and unremunerative grants that had been made before the author had a fair opportunity to appreciate the true value of his or her work product.” (11 Wis. L. Rev. 67 (2011))


The Unfair Bargaining Position

A Closer Look: Termination Litigation

• Milne v. Slesinger, 430 F.3d 1036 (2005)

• Are there instances when an Author is estopped from abrogating an “agreement to the contrary”?

• Is this provision “plain on its face”?

• NO, says the Ninth Circuit. According to the Legislative History, nothing in the Copyright Acts has altered the power of private parties to contract

• The spirit of provision is to safeguard Authorsagainst unremunerative transfers




• Penguin Group v. Steinbeck, 537 F.3d 193 (2008)

• Second Circuit follows Milne

• Neither plain language nor legislative intent of the Copyright Act precluded Authors and their statutory successors from losing the right to terminate by renegotiating it

• If rights-holder uses termination right as a bargaining power to renegotiate an agreement, spirit of provision is fulfilled





• Classic Media v. Mewborn, 532 F.3d 978 (2008)

• Ninth Circuit distinguishes Milne

• The rights-holder knew he had the right to vest copyright in himself at the time he revoked his prior right and leveraged his termination rights

• In Classic Media, the rights-holder had “nothing in hand with which to bargain” at time of renegotiation since termination of right had not vested

Lassie did in fact “COME HOME”


Questions to Think About

• Will music become more expensive as a result of music artists recapturing their rights to copyrighted works?

• Will Artists renegotiate their royalty rates with record labels or seek to publish them independently?

• New Talent: Will the labels – major and minor – be willing to invest at levels similar to the past knowing that 35 years later it may be a whole new ball game?


Thank You!


Kelley Clements Keller, Esq.(717) 386-5035

[email protected]@KelleyKeller

/TheKellerLawFirmLLC/KelleyKeller

http://www.twitter.com/KellerLawLLC

http://facebook.com/TheKellerLawFirmLLC

The "Fantastic Four" of Copyright Recapture

Education

copyright recapture

registration of copyright

copyright protection

copyrighted works

copyright office

copyright act

grant of rights

recapture of rights