Copyright Law: Spring 2003 Professor Susanna Fischer CLASS 12 February 19, 2003

GOALS FOR CLASS Continuing with our unit on authorship/ownership, learn whether the federal government can be a copyright owner? As part of our unit on authorship, learn about rules for transfers of copyright ownership and licenses of copyright rights (assignments and licenses, both exclusive and non-exclusive) Start a new unit on the formalities required under copyright law

WRAP UP POINTS: WORKS MADE FOR HIRE Don’t forget about the two types of work made for hire in section 101 CCNV holds that courts should apply the general common law of agency to determine whether the work was prepared by an employee or an independent contractor, and hence which provision of section 101 may apply

HUGE EXCEPTION TO COPYRIGHTABILITY/WORKS MADE FOR HIRE: GOVERNMENT WORKS To what extent are U.S. Government works copyrightable? What is the justification for these rules?

17 U.S.C. Section 105 Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

Definition of “Work of United States Government” (Sect. 101) “A “work of the United States Government” is a work prepared by an officer or employee of the United States Government as part of that person’s official duties.”

Works of State Governments These are not mentioned in s. 105 so in theory state and local governments can own copyright in their works but public policy may bar this. For example, in Banks v. Manchester (1888), the U.S. Supreme Court refused to find that a compilation of state court judicial opinions was copyrightable The rationale was public policy and a kind of due process rationale: judicial opinions are publicly owned because judges are paid with public funds and the public interest is served by free access to the law rather than judicial control of their opinions

Privately Drafted Legislative Codes Can legislative codes that are privately drafted but later adopted by states as law be the subject of copyright? Veeck v. SBCCI (5th Cir. En banc) model coes enter public domain and are not subject to copyright law – but as model codes they are

Foreign Governments Under English copyright law, British Government can own copyright in works prepared by employees Recent news item: British government plagiarism in Iraq report? See : ational/europe/08BRIT.html?th

TRANSFER OF COPYRIGHT OWNERSHIP COPYRIGHT IS A BUNDLE OF RIGHTS - Under the 1976 Copyright Act, the copyright owner can transfer any of these rights separately This principle of divisibility is set out in s. 201(d)(2) (note - this was a change in the law; previous law required only one copyright owner at all times - anyone else was a licensee)

DIVISIBILITY: Section 201(d)(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified in section 106, may be transferred as provided in clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, all of the protection and remedies accorded to the copyright owner by this title.

HOW DO YOU TRANSFER COPYRIGHT INTERESTS? Section 201(d)(1): The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession E.g. Jonathan Larson’s copyrights were inherited after his death. See also definition of “transfer of copyright ownership” in section 101

SECTION 101: TRANSFER A transfer of copyright ownership is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of copyright or of any of the other exclusive rights comprised in a copyright whether or not it is limited in time or place of effect, but not including a nonexclusive license.

WRITING REQUIREMENTS FOR TRANSFERS OF COPYRIGHT OWNERSHIP? Does the Copyright Act of 1976 require transfers of copyright ownership to be in writing?

204: Execution of Transfers of Copyright Ownership (a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent. Do you have to notarize such transfers? See section 204(b).

SUMMARY: WRITING REQUIREMENTS FOR EXCLUSIVE LICENSES Section 204 requires either : “note or memorandum of the transfer” or transfer by operation of law Why require a writing?

SUMMARY: WRITING REQUIREMENTS FOR EXCLUSIVE LICENSES Section 204 requires either : “note or memorandum of the transfer” or transfer by operation of law Why require a writing? See Effects v. Cohen - idea is to ensure that no one will inadvertently give away copyright; also require clarity about what rights are being given away and at what price. Enhance predictability and certainty.

EFFECTS V. COHEN (9th Cir. 1990) What is the Stuff and what food does it resemble? What was the copyrighted work created by Effects Associates and who commissioned it?

EFFECTS V. COHEN (9th Cir. 1990) Did Larry Cohen and Effects enter into a written contract? On what basis did Cohen claim copyright ownership? Could it be a work made for hire? An exclusive license? A nonexclusive license?

“Moviemakers do lunch, not contracts” Section 204’s writing requirement DOES apply to this situation (Hollywood executives are not exempted despite custom of the trade argument) Section 204 does not apply to nonexclusive licenses. Court implies a nonexclusive license on the basis that contribution was not of minimal value since Cohen paid almost $56,000 for it.

Did Effects have any recourse?

Effects could bring a suit for breach of contract in state court Effects could also assign or license its remaining rights in the special effects footage (though perhaps not worth much given the movie’s quality) All Effects gave up was one little twig of its bundle of copyright rights: the right to sue Cohen for copyright infringement

You Be the Judge Is Effects a good decision? Why or why not?

HYPOTHETICAL Novelist Neil wants to give Thea Translator the exclusive right to make a translation into Italian. Neil tells Thea he is giving her an exclusive license. Is that license valid? Why or why not? What are the benefits of an exclusive license as opposed to a nonexclusive license?

HYPOTHETICAL What are the benefits of an exclusive license as opposed to a nonexclusive license - see BMI v. CBS (S.D.N.Y. 1983) An exclusive licensee has the right to bring an action for copyright infringement; a nonexclusive licensee does not.

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 (see s. 205(a)) You PAY - fee is currently $80 for document containing no more than 1 title, $20 for additional titles (per group of 10 titles) For fees see:

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

Priority Between Conflicting Transfers: 205(d) First transfer prevails if recorded within one month after execution in US or within 2 months after execution outside of US OR at any time before recordation of second transfer OTHERWISE LATER TRANSFER PREVAILS if recorded first and if taken in good faith for valuable consideration without notice of earlier transfer

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.

TERMINATION OF TRANSFERS 1976 Act has some provisions retaining 1909 Act power for authors and survivors to terminate transfers of copyright at a certain stage into the copyright term These provisions are section 203 and section 304(c) We will study them later in the semester

SCOPE OF GRANT You were asked to read a number of cases about the proper scope and interpretation of various license agreements (contracts!) This is an important issue in practice. The question, arising from the general principle of divisibility, is: what copyright has the licensor licensed (or the assignor assigned). We are going to compare the approaches of these cases broadly, but you should make sure you read them carefully.

Comparing Cohen and Boosey What was the difference in approach that the 9th Circuit in Cohen and the 2d Circuit in Boosey took to interpreting the scope of a license agreement? Was there a different policy rationale underlying these decisions? Note that both cases involved both licenses and assignments - in Cohen, Paramount acquired H & J’s rights by assignment and in Boosey, Boosey acquired Stravinsky’s rights by assignment.

COMPARING Cohen and Boosey In Cohen, the 9th Circuit invoked the purposes that it saw as underlying federal copyright law to justify a narrow interpretation in favor of the licensor. In Boosey, the Second Circuit cast doubt on the Cohen approach, applying ‘neutral principles of contract interpretation rather than solicitude for either party.” Boosey approach effectively puts burden on licensor to include new media in license

Comparing Cohen and Boosey Cohen takes the approach that the scope of a license only includes rights that lie “within the unambiguous core meaning of the term”. Effectively favors licensor/author due to policy of Copyright Act. Boosey takes the approach that the language of the license is controlling and that the law should not favor either party.