20

to ensure that the termination right was inalienable and unwaivable, no agreement to transfer rights after termination would be valid unless entered into after termination had occurred, with the exception that a future agreement between the author and the original transferee would be valid if entered into after the notice of termination has been filed; (8) the proportionate shares between the widow and children were specified.

71

In preparation for the first congressional hearings on the revision effort, Register of Copyrights Abraham Kaminstein issued a supplementary report.70 The report traces the origins of the termination of transfer provisions to the failure of the 1909 Act to adequately give authors a second bite at the apple. Although noting the objections of publishers and the motion picture industry, who asserted that authors are not generally in a poor bargaining position, the Register concluded that the Copyright Office "remained committed to the general principle of reversion as one of the most important elements of the copyright law revision n72 program.

At hearings before the House in 1965, the parties noted their individual wishes that the bill had been more favorable to them, but stuck by their compromise on termination, and strongly supported the life plus 50 term.

73

How the Term of Protection Provisions in the 1976 Act Work

The 1976 Act's treatment of duration may be divided into three parts: (1) works created on or after January 1, 1978; (2) works unpublished and unregistered on January 1, 1978.

Works Created On or After January 1, 1978: Section 302

70 Copyright Law Revision Part 6: Supplementary Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess. (House Comm. Print 1965).

71 Id. at 71-72.

72 Id. at 72.

73

See Copyright Law Revision: Hearings on H.R. 4347 Before Subcomm. No. 3 of the House Judiciary Comm., 89th Cong., 1st Sess. 82-84, 92-94, 95-96, 1761-1765 (Authors League); 129, 142, 147-148 (book publishers); 162-164 (magazine publishers); 228-234, 239, 242-245 (American Guild of Authors & Composers); 251, 255, 257 (magazine photographers); 996-997. 1010, 1035-1037, 1048-1049 (motion picture companies); 1866-1870 (Copyright Office) (1965).

21

For this category of work, the 1976 Act adopted a basic term of life of the author plus 50 years. Where the work is made for hire, anonymous, or pseudonymous the term is 75 years from first publication or 100 years from creation, whichever occurs first.

Works Unpublished and Unregistered on January 1, 1978:
Section 303

This category encompasses works formerly under perpetual state common law copyright. The 1976 Act preempts that state protection and substitutes a somewhat complicated system. The minimum term of protection for these works is December 31, 2002, but if the work is published before that date, the term is extended until December 31, 2027. Alternatively, if a longer term is possible under the life plus 50 regime, that regime is applied.

Works Published Before January 1, 1978

These works were formerly governed by the 1909 Act's 28+28 year term: 28 years from first publication, with another 28 year renewal term if a timely renewal was filed. The 1976 Act essentially incorporated the 1909 Act's term structure into the 1976 Act for these works, but added on an additional 19 years to the renewal term for a possible total of 75 years (28+28+19). Where a work was in its first term on January 1, 1978, a timely renewal application still had to be filed. If the renewal application was timely filed, the author was granted a 47 year renewal term. If the work was in its renewal term on January 1, 1978, it was automatically granted a 47 year term.

Termination of Transfers

74

At an August 1964 meeting at the Copyright Office with the private sector on the first revision bills, an in-house lawyer for Time, Inc. expressed an opinion that the termination of transfer provisions would not help authors because they were too complicated and would instead "realistically" only benefit private sector attorneys "who are going to make a lot of money out of it."75 This comment was made, interestingly, before the provisions became appreciably more onerous for authors in the 1965 bills. Evidence being compiled by the Copyright Office for this hearing bears out the prediction.

74 This requirement was finally abandoned in the Automatic Renewal Act of 1992, Act of June 26, 1992, Pub. L. No. 102-307 (title I), 102d Cong., 2d Sess., 106 Stat. 264, but that act only governs works that were first published between 1964 and 1977.

75 See Copyright Law Revision Part 5: 1964 Revision Bill with Discussions and Comments, 89th Cong., 1st Sess. 166 (House Comm.

22

There are two termination of transfer provisions in the 1976 Act, Sections 203 and Section 304 (c). They are very similar, but not identical. Section 304 (c) governs transfers and licenses executed before January 1, 1978 and thus is limited to 1909 Act works whose term is measured from the date of first publication. Section 203 covers transfers and licenses executed on or after January 1, 1978 and thus covers three categories of works: (1) works that were subject to common law copyright on January 1, 1978; (2) works protected under the 1909 Act that were in their first or renewal term on January 1, 1978, but where the transfer or license was executed on or after that date; and (3) works created on or after January 1, 1978, and thus governed by the term structure of the 1976 Act. The possibility of termination under Section 304 (c) began on January 1, 1978. Terminations under Section 203 cannot begin until January 1, 2013.

Termination under Section 304 (c)

The termination right under Section 304 (c) is only for the extra 19 years added on to the 28 renewal term of the 1909 Act. The provision is quite complex:

(1) Grants covered

(a) exclusive or nonexclusive transfers or
licenses of renewal rights

(b) executed before January 1, 1978
(c) by a renewal claimant covered by the
second proviso of Section 304 (c)

(d) with respect to a work in its first

or renewal term of statutory protection
(2) Persons who may exercise the right
(a) as to grants by author(s):

(i)

the author(s) to the extent of the
author's interest (S304 (c) (1));

(ii) if an author is dead, by owners of more
than one half of the author's termination
interest, such interest being owned as follows:
(A) by surviving spouse if no children

or grandchildren;

(B) by children and surviving children of
dead child if no surviving spouse, per
stirpes and by majority action; or
(C) shared, one half by widow(er) and one
half by children and deceased child's
children (S304 (c) (1) and (4)).

(b) as to grants by others

(S304 (c) (1) and (4)).

-

(3) Effective date of termination

all surviving grantors

(a) designated time during five year period
commencing on later of:

(i) beginning of fifty-seventh year of copyright or
(ii) January 1, 1978 (S304 (c) (3)).

(b) upon 2

10 years notice ($304 (c) (4)) .

(4) Manner of Terminating

(a) written and signed notice by required persons

or agent's to grantee or grantee's "successor
in title"

(b) specification of effective date, within above limits
(c) form, content, and manner of service in accordance
with Copyright office regulation ($304 (c) (4) (B));
37 C.F.R. $201.10)

76

(d) recordation with the Copyright office before
the effective date ($304 (c) (4) (A))

(5) Effect of termination

(a) of grant by author

(i) reversion to that author, or if dead, those
owning the author's termination interest

(including those who did not join in signing
the termination notice) in proportionate
shares ($304 (c) (6) and (c) (6) (C))

(b) of grant by others reversion to all entitled
to terminate (5304 (c) (6))

(c) in either case, future rights to revert upon
proper service of notice of termination

(S304) (c) (6) (B)).

(6) Exceptions to termination

(a) works made for hire are not subject to termination
(b) dispositions by will are not subject to termination

76 These regulations require that the notice be served upon each "grantee" whose rights are being terminated, or "the grantee's successor in title," by personal service, or by first-class mail sent to an address "which, after a reasonable investigation, is found to be the last known address of the grantee or successor in title." 37 CFR $201.10 (d) (1). The regulation further provides that "a reasonable investigation" includes but is not limited to a search of the records in the Copyright office. Id. $201.10 (d) (3). In the case of musical performing rights, a report from performing rights society identifying the person(s) claiming current ownership of the rights being terminated is sufficient. Id. For a discussion of the term "successors in title, see Burroughs v. MGM, 491 F. Supp. 1320 (SDNY 1980); 519 F. Supp. 388 (SDNY 1981), aff'd, 683 F.2d 610 (2d Cir. 1982). One issue in Burroughs was the meaning of "successors in title." Is the term limited to transferees of exclusive rights, or does it also include nonexclusive licenses? Although the issue was not reached by the Second Circuit majority, Judge Newman, in a concurring opinion, reasoned that since the Copyright Office regulations speak of providing for a reasonable investigation of "ownership," and since under Section 101 of the Act a "transfer of ownership" includes assignments and exclusive licenses but excludes nonexclusive licenses, see 17 USC $101, the term must be construed accordingly.

24

(c) derivative works prepared under a transfer or
licensee executed prior to termination may continue
to be utilized under the terms of the transfer,
but with no right to make new derivative rights
($304 (c) (6) (A) ) 77

(d) rights that arise under any other federal statute or
under any state or foreign law are not affected

(S304 (c) (6) (E)).

(7) Further grants of terminated rights

(a) each owner is regarded as a tenant in common
except that a further grant by owners of a
particular deceased author's terminated rights
must be in the same number and proportion of
his or her beneficiaries as required to terminate,
but then binds them all, including nonsigners,
as to such rights

(b) must be made after termination, except that, as to
original grantee or successor in title, it may

be after notice of termination.

While there is no form for termination notices, Copyright Office regulations specify that the notice must contain a "complete and unambiguous statement of facts ... without incorporation by reference of information in other documents or records, include the following:

(1) the name of each grantee whose rights
are being terminated and each address
at which service is made;

(2) the title and the name of at least one
author of, and the date copyright was

#78

and

77 In Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985), the Supreme Court reversed a lower court opinion construing this provision as granting the author all of the royalties from the exploitation of the sublicensed derivative works after termination of the original grant. Under Mills Music, middlemen (transferees who have granted sublicenses) are entitled to share in the royalties from the derivative work's continued exploitation according to the terms of the original contract. See former Register of Copyrights Barbara Ringer's criticism of Mills Music in Civil and Criminal Enforcement of the Copyright Laws: hearing Before the Subcomm. on Patents, Copyrights, and Trademarks of the Senate Judiciary Comm., 99th Cong., 1st Sess. 79-95 (1985); and generally The Copyright Holder Protection Act: Hearings on S. 1634 Before the Subcomm. on Patents, Copyrights, and Trademarks of the Senate Judiciary Comm., 99th Cong., 1st Sess. (1985).