COPYRIGHT TERMINATION:
HOW AUTHORS (AND THEIR HEIRS) CAN
RECAPTURE THEIR PRE-1978 COPYRIGHTS
By Attorney Lloyd J. Jassin
To protect authors of older works from having
to “live” with a bad deal they entered into when they had
little negotiating skill or leverage, the Copyright Act provides that
at the end of 56 years, the author (or if the author is dead, his wife
and children or grandchildren), can recapture the last 39 years of copyright.
For example, a publishing contract signed in 1948 can be terminated
in 2004, provided timely notice of termination is given. As long as
the work is not a “work made for hire,” the right of termination
cannot be waived -- even if there are contractual provisions to the
contrary.
The Copyright Act also gives families of deceased authors another opportunity
to extract value from copyrighted works. When the author of an older
work dies during the initial 28-year term of copyright, that author’s
family has the right to reclaim his or her renewal copyright -- a further
term of 67 years of copyright protection. This added opportunity to
get back ownership of copyrights exists even if the author assigned
his or her renewal term (or devised it by will) to someone other than
his or her family.
These often overlooked, but powerful rights, exist, in part, because
young writers, musicians and artists, often signed away their copyrights
for little or no money early in their careers. For example, in 1938
Jerry Siegel and Joe Shuster, two young men from Cleveland, Ohio, signed
over all of their rights to the Superman character to DC Comics
for $130.00 and vague promises of future work. To address this, and
similar economic injustices, Congress gave authors (and their heirs)
a second chance to strike better financial deals. As a result, starting
in 1999, Siegel’s heirs recaptured his rights to the Superman character. Fortunately, you don’t have to be a man of steel to
reclaim your rights. The estates of Truman Capote, Norman Rockwell,
Lorenz Hart, and many others have availed themselves of these valuable
rights.
Termination After 56 Years
Section 304(c) of the Copyright Act, says that a copyright owner (or
his or her heirs) can terminate all grants, licenses or transfers of
rights (made prior to 1978) beginning on the 56th year after that assignment
was made. This allows authors to benefit from laws that extended the
term of copyright from 56 years to 95 years. The Copyright Act provides
a five year period beginning in the 56th year, in which these grants,
licenses and transfers may be terminated. To terminate a publishing
contract, the author, or his or her heirs, must file a notice of termination
within the time limits specified by the Copyright Act. If not terminated,
the agreement will continue for the life of the copyright -- or the
duration of the agreement.
Copyright Duration
To understand this valuable right, it is helpful to have a basic understanding
of the copyright renewal system. Before January 1978, the duration of
all copyrights was split into two consecutive 28-year terms. During
the last (28th) year of the initial term, authors were entitled to renew
their copyrights for a further term of 28 years. Through a series of
amendments to the Copyright Act, the renewal term was extended 19 years,
and then an additional 20 years, for a total of 95 years (28+28+19+20=95).
If an author dies before renewal time arrives, certain statutory successors
(generally, the author’s family, executor or next of kin) are entitled
to recapture his or her copyright for the extended term. Since pre-1978
copyrights now endure for 95 years, heirs can recapture up to 67 years
(28+67=95). Works published after December 31, 1977 are protected for
the life of the author plus 70 years.
The Opportunity to Terminate Knocks Twice: Termination After 75
Years
If you miss the opportunity to recapture the 39-year term of copyright
(56 + 39 = 95), you can try again at the end of 75 years to recapture
the final 20 years of copyright. This provision allows authors, artists
and composers who missed the opportunity to recapture the 19-year term
extension provided under the 1976 Copyright, to reap the benefits of
the 20-year windfall afforded under the 1998 Copyright Term Extension
Act. To take advantage of this new opportunity to terminate, notice
of termination must be sent to the proper party no later than 78 years
from the date of the original copyright (or, as early as 65 years after
initial publication).
The Devil is in the Details
The manner in which notice of termination is given is highly technical
and beyond the scope of this article. For example, notice provided prematurely,
or too late, can frustrate your efforts to recapture rights. Besides
the author’s widow or widower, children and grandchildren, the
Copyright Act also permits termination rights to be exercised by an
author’s executor, administrator or personal administrator, provided
there is no spouse, children or grandchildren. Also, in situations where
there are multiple authors, or after the death of an author, more than
one individual may hold the right to terminate. In addition, termination
notices must be recorded with the Copyright Office prior to the date
of termination. Keep in mind that special rules apply to derivative
works, such as motion picture versions of books. Despite termination,
the right to continue to exploit previously-prepared derivative works
(e.g., a motion picture based on a book) may be immune, or safe from
termination. This privilege, however, does not extend to preparation
of new derivative works based on the work covered by the terminated
grant.
Any copyright proprietor wishing to terminate a grant, license or transfer
of any copyright rights must provide at least two (2) years’ and
no more than ten (10) years’ written notice to the person to whom
the grant was made. For example, if work was copyrighted on September
26, 1948, termination could be effected as early as September 26, 2004.
Therefore, the earliest possible date to serve a “Notice of Termination”
would be September 26, 1994. The latest date you could serve notice
of termination in this instance would be September 26, 2007. Before
the stated date of termination, an author, for example, can negotiate
for a better deal with his original publisher, or, upon termination
make a new deal with a new publisher.
| TIP: Notice may be served anytime during the period beginning
46 years after the original copyright date and running through 59
years after the original copyright date. |
What a Family Should Do if an Author Dies During the Initial 28-Year
Term
If you are the heir of an author who died during the first 28-year term
of copyright, you may have a hidden interest in his or her pre-1978
copyrights. Even if that author assigned or willed his or her copyrights
to a third party, the author’s heirs, not that unrelated
third party (e.g., mistress or publisher), would own the renewal term.
That is because when an author dies before the end of the 28th year
of copyright, the 67 years of renewal copyright vests automatically
in the author’s statutorily designated heirs. For example, following
the initial term of their deceased father’s play, The Cave Dwellers,
the children of Pulitzer Prize-winning playwright, William Saroyan renewed
the play’s copyright in their name. Asserting Saroyan’s children
were estranged from their father, the William Saroyan Foundation, to
whom Saroyan left his copyrights, attacked the children’s renewal
claim. The court, however, concluded that Saroyan’s bequest of
renewal rights in the play to the Foundation was invalid. Why? To the
surprise of many -- including some family law and estate planners --
federal copyright law trumps a decedent’s will. In this instance,
notwithstanding his wishes to the contrary, since Saroyan died before
the renewal term vested, his copyrights remained with his family.
To take advantage of this interesting wrinkle in copyright law the work
must have been published before January 1, 1978. You should “claim”
your right in the renewal term by sending the publisher written notice
that you acquired the renewal rights in the copyright. If you fail to
send notice, the publisher, or other licensee or assignee, will continue
to collect monies. If a writer, or writer’s family, is uncertain
whether he or she assigned their renewal interest, contact an attorney
familiar with these matters to review the contracts.
| TIP: There are two circumstances under which one can “bump”
a will or contract. First, if the copyright contract does not expressly
grant or assign the renewal rights to the publisher or record company.
Second, even if the contract or will grants a third party renewal
rights, that grant will be disregarded if the author dies during
the first 28-year copyright term. |
How Heirs Can Stop Film and TV Adaptations of Terminated Works
The policy of permitting an author’s heirs to recapture rights
if the author dies before the renewal term, also allows an author’s
heirs to stop exploitation of motion picture and television programs
(and other derivative works) based on the terminated work. That is,
after transfer of rights in the underlying work is terminated, the owner
of the derivative work (e.g., motion picture version of a novel) has
no right to continue exploiting the work in any manner.
Even if a motion picture company obtained the right to produce a film
based on a novel, and that agreement was for the “for the full
term of copyright, and any renewals and extensions thereto,” the
author’s heirs are not bound to that agreement if the author does
not survive to the renewal term. If the motion picture company does
not obtain a license to distribute the film from the author’s heirs,
continued distribution of that film during the renewal term would infringe
the novel’s copyright. Of course, this powerful right to stop Hollywood
from distributing film adaptations only works if the author does not
survive to the renewal term. Like the rules governing termination after
56 and 75 years, the rules governing recapture of renewal terms are
very complicated.
Advice for Publishers
If a publisher would like protection against the eventuality of a copyright
owner’s death before the renewal period, certain steps can be taken
for protection. For example, if the author is very old, or ill, publishers
should file a copyright renewal on the author’s behalf at the beginning
of the 28th year after publication. Publishers can also attempt to obtain
assignments of renewal rights from the author’s spouse, children
and even grandchildren -- although, this approach is not foolproof.
Keep in mind, time is your biggest enemy. Therefore, you must
act promptly. Of course, if you are an author, and are very ill, it
would make sense not to renew you copyright. In the event of your death,
provided you or your publisher didn’t file for renewal, your heirs
would be able to recapture your copyrights during the renewal term.
Important! If heirs do not file a copyright renewal application, they
forfeit the right to stop exploitation of derivative works during the
renewal period.
Keep in mind that the days of contact and will bumping are limited.
After 2005, there will be no more copyright renewals, at which time,
the dead can rest soundly knowing that their wishes (and wills) will
be carried out.
Terminating Post-1977 Author Grants & Assignments
While beyond the scope of this article, post-1977 grants are subject
to similar, but not identical, termination rules as pre-1977 works.
Post-1977 grants, such as a songwriter agreement with a music publisher,
may be terminated during a five year period beginning 35 years after
the grant was made. To exercise the 35-year right of termination, authors
must give written notice not less than two or more than ten years from
the intended termination date. That means, if the original copyright
date is January 1, 1978, a notice of termination can be served as early
as January 2003. For 1979 works, notice of termination can be served
as early as 2004, and so on. Put another way, for post-January 1, 1978
works, the earliest date of notice is 25 years after the grant was signed.
Unlike the recapture rules for pre-1978 copyrights, which provides for
termination of rights granted by either the author or his or
her heirs, the 35- year rule only applies to grants made by the author after January 1, 1978. What this means is that the author’s surviving
spouse or children may terminate assignments executed after January
1, 1978, provided, the assignment was made by the now dead author.
Conclusion
The issue of who owns and controls copyright rights after an author
dies is a complicated matter. If you are the spouse, child, grandchild
or next of kin a deceased author, you may have inherited the right to
recapture that individual’s valuable copyrights. Bear in mind,
artistic and literary property are governed by very complex rules. Therefore,
if you think you are eligible to recapture your spouse’s copyrights,
or terminate your father’s publishing contract, you are advised
to contact a copyright attorney who is knowledgeable in this area.
Note: This article assumes, without taking a position on the
matter, that the US Supreme Court will uphold the constitutionality
of the copyright term extension enacted by Congress.
|
