Amanda Carpenter is a JD Candidate at Osgoode Hall Law School.
To help protect authors, the U.S. Copyright Act of 1976 provided for inalienable termination rights, rights unique to the United States. An inalienable termination right means that when an author assigns their copyright rights to a publisher, and even if that assignment agreement stipulates that the assignment of rights will last forty years the author will be able to reclaim his or her rights to their creation after 35 years. That is, copyright law steps outside of the freedom of contract realm and terminates the assignment, thus allowing the author to regain the copyright rights, “notwithstanding any agreement to the contrary”.
The reasoning behind this is to help protect authors who are starting out their careers from receiving a dime for their creation; for example, the author of Superman sold his creation for a pittance to a publisher. After several years, Superman became very lucrative and proved to be a great bargain for the publisher, but not so for the author. The law is there for the author to be able to receive a fair return by terminating the publisher’s rights to Superman and giving these rights back to the author who will then be able to strike a better bargain with the publisher.
Termination rights are nothing new; they were found in the 1710 English Statute of Anne, the very first copyright act, which after a first 14-year term re-vested a second term of copyright in the author. However, termination rights had become abused over the following centuries (particularly the 20th) by publishers pressuring authors into assigning to publishers not only their copyright rights but also their right to terminate the agreement. In order to protect authors, the unique and experimental U.S. Copyright Act of 1976 ensured that termination rights would be inalienable by providing that “notwithstanding any agreement to the contrary” the law would step in and terminate the assignment, giving the rights back to the authors so that they would be able to strike a better bargain and profit off their creations. The IP Colloquium has a new podcast on Copyright Termination in which a couple of well known copyright experts discuss the intricacies of copyright termination, focusing specially on “works for hire”. This issue is of importance right now because the first “termination rights” created under the 1976 copyright law would be taking effect now — that is, 35 years after the author was first able to assign their copyright rights under the Act in 1978.
The copyright experts in this podcast explained how it was decided when the Copyright Act of 1976 was created that an exception would exist to these inalienable termination rights. This exception would apply to works that could be classified as “works for hire”. A work for hire is a work that was created over the course of employment or that can be classified as a “commissioned work”. For a creation to be a commissioned work there has to be a written contract stipulating the work is a work for hire and the work has to fit into one of nine special enumerated categories. Examples of these enumerated categories are encyclopaedias, motion pictures, and atlases, which are all examples of types of creations for which there are many different authors. Since computer software did not exist at the time, it was not given its own special enumerated category. An exception for commissioned works was created because the publishers who had been assigned copyright rights found that when authors were able to terminate their assignment of copyright rights after 35 years it would be too difficult and time-consuming to get re-assignments from all the joint authors if the publisher continued to want to publish that particular encyclopaedia. Hence, the law made it so that termination rights would not exist for these works so the publisher would not have to get re-assignments from all the joint authors in order to continue publishing after 35 years.
The podcast then went through some hypotheticals that provided examples of how copyright law in this area works. Hypothetical one involved a comic book author who assigns his of her copyright right to a comic book publisher in 1970. The comic book author can terminate their right after 56 years since the terms under the Copyright Act of 1909 apply (and not the 1976 Act) – that is, in 2026. There is a five year window for terminating these rights after which the author will not have another chance to terminate the assignment. To effect this termination, the comic book author will have to serve a notice made by first class US Mail at least two years in advance of the date of termination to a maximum of ten. So, 2016 would be the first year that the copyright author would get the chance to serve termination notice in order to reclaim his or her copyright. The “works for hire” exception to termination rights doesn’t apply since the comic book author was not an employee when he or she created his comic book and there was no written contract stipulating that this was a work for hire. Other hypotheticals in the podcast discussed derivative works, and how publishers will try to fit the work that they have acquired rights over into one of the enumerative categories for commissioned works so that the right to terminate will not apply. For another example of termination rights one can also refer to this previous IPilogue post.
In short, this recent podcast sheds some light on copyright termination, an area of copyright law that is very complex and complicated but that will become increasingly subject to litigation over the coming years. Regardless of whether one agrees with Congress that authors should be provided with extra protection in this manner, it deserves a listen.
4 Responses
Interesting article, Amanda. As you may know, Canadian copyright law deals with this problem by creating a reversionary right for authors who are the first owners of copyright that terminates all assignments 25 years following the death of the author (s. 14 of the Copyright Act). Canada inherited this concept from British law where the reversionary right was introduced following a public outcry about the plight of Dickens’ descendants, who were left penniless after his death. I knew that similar rights had been extinguished in US law but hadn’t known about the termination right.
The statement in the second to last paragraph that if the author or the author’s heirs did not effectuate termination of the prior grant of copyright within the five (5) year window, following the 56th year, after which the author will not have another chance to terminsate the assingment, is not completely true. Pursuant to the Sonny Bono Copyright Term Extension Act (“SBCTEA”), which amended the Copyright Act of 1976 (the “Copyright Act”) and added an additonal 20 years to the term of copyright for pre-’78 works, also amended Section 304 the Copyright Act with respect to the termination of grants of copyright in pre-’78 works. Section 304 (d) was added and provided that in the case of copyright, other than a work made for hire, subsisting in its renewal term on the effective date of the SBCTEA for which the the termination right provided in subsection 304(c) (i.e. the 5 year window after the 56th year) has expired by such date, where the author or owner of the termination right has not previoulsy exercised such termination right … termination of the grant for the additonal 20 years provided by the SBCTEA may be effected at any time during a period of 5 years beginning at the end of 75 years from the date copyright was orignally secured. Thus, the author or the author’s heirs do, in fact, get a a so-called “third bite at the apple” for the remaining 20 years of copyright.
I assigned a song to a publisher in 1988, I thought you can reclaim the copyright after 28 years. Is that true?
Hi Ted, I believe you are referring to the initial 28-year term in U.S. Copyright Law, as mentioned in s.23 of the Copyright Act of 1909 (URL: http://law.copyrightdata.com/index.php ). Essentially, after the 28 years ended and if the copyright was not renewed (by registering a renewal with the U.S. Copyright Office), the copyrighted work could be freely reproduced and/or incorporated into new works because it had entered the public domain. However, this 28-year term has become modified due to the passing of subsequent statutes, such as the Copyright Act of 1976 to which F. Casey Del Casino refers in his earlier comment about s.304 and the 75-year term (URL: http://www.copyright.gov/title17/92chap3.html ). I believe the Sonny Bono Copyright Term Extension Act of 1998 further extended copyright protection to the duration of the author’s life+70 years for general copyrights and to 95 years from publication or 120 years from creation (whichever is shorter) for “works for hire” and works copyrighted before 1978 (URL: http://www.copyright.gov/legislation/s505.pdf ).
Also, with respect to an assignment occurring between 1964-1977, I found the following when doing a quick Google Search that may be of interest to you and/or shed light on your question:
–> “For example, if an author dies before the 28th year of the original term and a statutory renewal claimant registers a renewal within the 28th year, that claimant can *terminate an assignment* made by the deceased author authorizing the exploitation of a derivative work. If a renewal is not made during the 28th year, a derivative work created during the first term of copyright under a prior grant can continue to be used according to the terms of the grant. Thus, an author or other renewal claimant lost the right to object to the continued use of the derivative work during the second term by failing to make a timely renewal, but any terms in the prior grant concerning payment or use, e.g., a royalty, must continue to be honored. This exception does not apply to a new derivative work, which can only be prepared with the consent of the author or other renewal claimant…A renewal registration made after the 28th year will not confer the benefits mentioned above but will confer other benefits denied to unregistered works…In cases where no original registration or renewal registration was made before the expiration of the 28th year, important benefits can still be secured by filing a renewal registration at any time during the renewal term…”
(URL: http://www.copyright.gov/circs/circ15.pdf )
Thus, from a quick reading of that document published/printed by the U.S. Copyright Office in 2006, it appears that an assignment could be terminated by a renewal in **very specific circumstances** in the 28th year (and this may or may not be limited to works copyrighted between 1964-1977). It also appears from that document that “[t]he author, if living, may claim [renewal] as the author” except with respect to 4 types of works (eg. posthumous works, see Paragraph B on pg. 2-3); however, since I am a Canadian Lawyer and not fully familiar with U.S. Law, I cannot provide you with any legal advice or services in this regard. Since you assigned your song in 1988 and it is now 28 years later in 2016, I would strongly suggest you consult with an American Lawyer if you would like to explore this issue further. Perhaps, Mr. Del Casino from the above comment (URL: http://delcasinolaw.com/ ) can help you out, since he is a former musician himself based out of Nashville, Tennessee and appears to know a lot more about U.S. statutes than I do. Cheers, and all the best.
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