Copyright Law: Fall 2006Professor Susanna Fischer

CLASS of

October 18, 2006

Finishing up Transfers

Copyright Duration

COPYRIGHT OWNERSHIP: TRANSFERS: WRAP UP

• For grants that transfer copyright ownership (including exclusive licenses) there is a signed writing requirement in s. 204(a)

• No special form of works is required but it must be clear that parties actually agreed to convey rights in the copyright

• An electronic writing could suffice (see federal E-Sign statute 15 U.S.C. § 7001)

E-SIGN

• “[A] signature, contract, or other record relating to such transaction may not be denied legal effect, validity, or enforceability solely because it is in electronic form.”

Recordation System

• What is recordation?

Recordation System

• What is recordation? It is a voluntary system permitting transfers of copyright ownership to be recorded with the Copyright Office.

• How do you record a transfer?

Recording a Transfer

• You file EITHER the original transfer OR (more often) a copy that is accompanied by a sworn certification that it is a true copy of the original transfer

• You PAY - fee is currently $95 for document containing no more than 1 title, $25 for additional titles (per group of 10 titles)

Recordation as constructive notice (section 205)

• Recordation operates as constructive notice (so long 2 conditions are met: work is specifically identified and there is a registration of copyright for the work) - 205(c)

• Recordation gives transferee priority over later transfers - 205(d)

Priority Between Conflicting Transfers

• First transfer prevails if recorded within one month after execution in US or within 2 months after execution after US OR at any time before recordation of second transfer

• OTHERWISE LATER TRANSFER MAY PREVAIL IF RECORDED FIRST

Priority between conflicting transfer and nonexclusive license• Section 205(e) : Nonexclusive license,

whether recorded or not, prevails over conflicting transfer of copyright ownership IF license evidenced by written instrument signed by copyright owner or authorized agent AND license taken before transfer executed OR license taken in good faith before recordation of transfer and without notice of it.

Copyrights as collateral

Copyrights as collateral

• Eg songwriter uses the copyrights in her songs as collateral for a loan

• How do you perfect this security interest?

Two possibilities for perfecting security interest in copyright

• 1. File in the state U.C.C. office (like for many types of real property)

• 2. Record the security interest in the Copyright Office

• Which is favored by the court in National Peregrine, Inc. v. Capital Fed. Sv. & Loan Ass’n, (C.D. Cal. 1990)?

Peregrine case (C.D. Cal. 1990)

• What does this case hold?

Peregrine case (C.D. Cal. 1990)• What does this case hold? Section 205,

provision for recordation of transfers of copyright ownership in the Copyright Office, preempts state laws such as UCC providing for recording of security interests in various state offices

• Thus, if a bank takes a security interest in copyrights in many works (like the 145 films at issue in Peregrine), it will have to record these in the Copyright Office

Peregrine case (C.D. Cal. 1990)• There is much criticism of this case, but

subsequent bankruptcy courts have followed it

• Why has this case been criticized?

Peregrine case (C.D. Cal. 1990)• There is much criticism of this case, but

subsequent bankruptcy courts have followed it• Why has this case been criticized? Because it

complicates relatively simple business transactions and also creates uncertainty for past lenders who only made UCC filings

• Some legislative proposals to overturn this decision, but none enacted so far. Limited to registered copyrights in World Auxiliary

The Securitization of IP?

• Bowie bonds were a securitization of David Bowie’s royalties, the first securitization of IP assets

• Some commentators have argued that,

• despite media hype, there have not been many of these deals in practice and their proliferation is unlikely.

“Arising Under” Copyright or Contract Law

• Licenses are contracts so one might think that disputes over license agreements would be governed by state law, not federal copyright law. Yet clearly some issues involving licenses, such as whether the writing requirement of the Copyright Act are met, arise under federal law.

• Courts have had difficulty in determining when such claims “arise under” federal law.

New York Times v. Tasini

• Recent Supreme Court decision concerning clash between copyright owner of collective work and freelance author of a contribution to that collective work.

• What was the issue for the Supreme Court to decide?

New York Times v. Tasini

• Does s. 201(c ) protect publishers from infringing freelancers’ copyrights where publishers entered into agreements with database services (such as LEXIS/NEXIS to include freelancers’ articles in the databases without freelancers’ consent?

SECTION 201(c)

• Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

A Revision?• Was the reproduction/distribution of the articles in

the databases a “revision of the collective work”?

• In the view of Justice Ginsburg, author of the majority opinion (and, perhaps notably for her decision, mother of Professor Jane Ginsburg, author of your casebook)?

• In the view of Justice Stevens, author of the dissent?

• What do you think?

Policy

• Justice Ginsburg noted that there might be policy concerns in finding for the freelancers, as the publishers argued. What were these concerns and how does Justice Ginsburg address them?

• What does Justice Stevens have to say about these policy concerns?

Did the Freelancers Win the Battle But Lose the War?

• In Tasini a pyrrhic victory? Will publishers just force the freelancers to enter into assignments or work for hire agreements?

National Geographic CD-Rom

• Compare: Greenberg v. National Geographic Soc’y, 244 F.3d 1267 (11th Cir. 2001) with Faulkner v. Nat’l Geographic Enterprises, Inc., 409 F.3d 26 (2d Cir. 2005)

• Supreme Court refused to grant cert. in Faulkner in December 2005

TRANSFER BY OPERATION OF LAW

• COMPARE: CB p. 385

• CA In re Marriage of Susan M. & Frederick L. Worth (1987) WITH

• LA Rodrigue v. Rodrigue (5th Cir. 2000)

• [CAN state community property laws step in to enforce sharing of copyright?]

DURATION OF COPYRIGHT OWNERSHIP

• How long is it constitutional for a copyright to last? Remember: Constitution says Congress can gives Authors protection “for limited Times”

• How long should a copyright last? Should it be for life of author plus term of years or for a specific term of years, or a specific term of years plus a renewal term?

DURATION UNDER 1909 ACT

• 1909 Act: initial and renewal term (like Statute of Anne). How long were these under the 1909 Act?

• Under the Statute of Anne?

• What is the purpose of a renewal term? NOTE idea of statutory beneficiaries

RENEWALS UNDER 1909 ACT

• How did you renew copyright under the 1909 Act?

RENEWALS UNDER 1909 ACT

• How did you renew copyright under the 1909 Act? You had to file a renewal registration within the last year of the copyright term.

• To renew, you had to register the work.

• What happened if you did not file a renewal registration?

WHAT IF AUTHOR WAS DEAD BY THE 28th YEAR?

• Who, if anyone, had right to renew the copyright?

WHAT IF AUTHOR WAS DEAD BY THE 28th YEAR?

• Who, if anyone, had right to renew the copyright? Statutory beneficiaries: Widow or widower, children, executor or next of kin (1909 Act § 24)

PROBLEMS WITH RENEWALS UNDER 1909

ACT

PROBLEMS WITH RENEWALS UNDER 1909

ACT• For many works, renewal was not sought,

or there were problems with renewal registration.

• That is why House Report characterized it as “one of the worst features of the present copyright law” – life of author more clear (see CB p. 391 para. 5)

RENEWALS UNDER 1909 ACT

• Could the author assign his renewal expectancy before renewal vests? See Fred Fisher Music (1943) ; - Yes

• Isn’t this contrary to the purposes of renewal?

RENEWALS UNDER 1909 ACT

• Can the author assign the statutory beneficiaries’ renewal rights? See Saroyan v. William Saroyan Foundation, 675 F. Supp. 843 (S.D.N.Y. 1987), aff’d, 862 F.2d 304 (2d Cir. 1988) (CB p. 420)

• Saroyan: “Everyone’s got to die, but I always thought an exception would be made in my case”

VESTING OF RENEWAL TERM

• How long into the 28th year of the initial term must the author live to vest the renewal interest of the author’s assignee?

• Conflict between cases: Marascalco v. Fantasy, Inc. (9th Cir. 1991) and Frederick Music Co. v. Sickler (S.D.N.Y. 1989) (see CB p. 424)