Monday, August 23, 2010

Do you remember when I licensed that copyright to you?

S...The law says that license ends in 35 years if I want it to.

Not a lot of people realize that copyright assignments can be terminated after 35 years. There is a five year window to terminate. It is written into the Copyright Act. 17 U.S.C. § 203(a)(3) for transfers executed by the author on or after January 1, 1978. There is a process by which the author (or his/her heirs) can terminate the license. (Other statutes and time periods apply for works created prior to the enactment of the 1976 Copyright Act which are governed by 17 U.S.C. § 304.)

The first set of terminations may take place for licenses made in 1978 (for works created pursuant to the 1976 Copyright Act) in 2013. Notifications can already be served and must provide at a minimum 2 years before the termination date. 17 U.S.C. § 203(a)(3) and 203(a)(4)(A).

There are not many reported cases involving copyright termination rights. These cases all involve terminations made prior to the 1976 Act and usually involve the heirs of an author. One such case involves Superman. See Siegel v. Warner Brothers Entertainment, Inc., 542 F. Supp 2d 1098 (C.D. Cal. 2008). In that case, the widow and daughter of Jerome Siegel, one of the joint owners of the Superman character, was able to terminate the copyright assignment to Warner Bros. (the successor in interest to DC Comics). Siegel, 542 F. Supp 2d at 1145. The heirs of the other owner (Joseph Shuster) are now attempting to terminate its license and have filed termination notices effective in 2013.

Both Siegel and Shuster’s heirs are using the same lawyer – Marc Toberoff to terminate the rights in the Superman character.
DC Comics sued Toberoff claiming Toberoff is preventing his clients from settling or negotiating with DC. DC also claims that he wants a share in the rights. The case is pending and Toberoff recently filed a motion to strike based on California’s anti-SLAPP laws. (See Toberoff’s motion here, via THR, Esq.)

Despite the new provisions, termination of granted rights is not guaranteed. The few reported cases involving copyright termination are likely to provide guidance for the future of copyright terminations.

Several recent cases deal with the “agreement to the contrary” provision found in §304(c), which states, “termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or to make any future grant.” 17 U.S.C. §304(c)(5).

Twice, courts have denied heirs’ efforts to terminate rights granted prior to 1978. In both cases, the courts ruled that the termination rights to the original grants were considered forfeited due to post-1978 grants by the heirs. See Penguin Group (USA) v. Steinbeck, 537 F. 3d 193 (2d Cir. 2008) (termination notice to rights granted in 1938 was ruled invalid due to a 1994 agreement between Steinbeck’s wife and the publishing company); Milne v. Stephen Slesinger, Inc., 430 F. 3d 1036 (9th Cir. 2005) (termination notice to 1930 grant ruled invalid due to 1983 agreement).

The Ninth Circuit addressed §304(c)(5)’s language again in 2008 in Classic Media, Inc. v. Mewborn, 532 F.3d 978 (9th Cir. 2008) and in this case ruled that the rights to Lassie could come home to the daughter of author Eric Knight, despite an 1978 assignment. (Interesting note: Marc Tobleroff was counsel for Mewborn, Knight’s daughter)

It will be interesting to see how many copyrights transfers are terminated. I suspect that there will be many more of these suits in the future. The ramifications of these termination provisions will be the subject of (what is likely to be) a series of posts.

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