25

originally secured in, each works to
which the notice applies (including if
available the copyright registration
number);

(3) a brief statement reasonably identifying
the grant being terminated;

(4) the effective date of the termination;
(5) the name, actual signature, and address
of the person executing the termination.

79

80

In the case of works consisting of a series or containing characters, special care has to be taken to list separately each and every work in the series or all works in which the character appears. A complete copy of the termination notice must be recorded with the Copyright office before its effective date of termination, and such recordation must be accompanied by a statement setting forth the date on which the notice of termination was served and the manner of service (unless the information is already contained in the notice) 81 and by the prescribed fee.82

The Section 304 (c) termination right is inalienable and unwaivable, 83 but further grants may be made after termination. An agreement to make a further grant may be made after the notice of termination has been given (but before termination is effective) if that agreement is made between the author or designated

79

37 CFR SS201.10(b)(1) and (c)(1), (4). A duly authorized agent may also sign the notice but care should be taken to clearly identify the person(s) on whose behalf the agent is acting. 37 CFR $201.10 (c) (3).

80 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) (a notice of termination listing 35 titles (including the first "Tarzan" story), but omitting five sequels in which the character Tarzan appeared, was found to be ineffective in preventing the grantee's continued use of the Tarzan character). Cf. Judge Newman's concurring opinion, in which although agreeing in the result, he disagreed on the effect of not terminating the five sequels, reasoning that the right to base a motion picture on those sequels would permit uses not derived from the sequels.

81 37 CFR $201.10(f)(i), (ii).

82 37 CFR $201.10(f)(2).

83 17 USC $304 (c) (5):

"Termination of the grant may be

effected notwithstanding any agreement to the contrary, including

26

statutory successors and the original grantee.84 This provision, erroneously described sometimes as a "right of first refusal," does not give the original grantee a right to conclude such an agreement; it only means that if such an agreement is made, it will be enforceable.

85

Termination Under Section 203

Section 203's provisions are similar but not identical to Section 304 (c), but are equally complex:

(1) Grants covered

(a) exclusive or nonexclusive transfers
or licenses

(b) executed on or after January 1, 1978
(c) by an author

(d) as to any work

(i) created before or after January 1, 1978;
(ii) subject to common law copyright ($303);
(iii) in first-term copyright (S304 (a));
(iv) in renewal term (S304 (b))

(2) Persons who may exercise right

(a) the author or a majority of the authors
who exercised it (S203 (a) (1));

(b) if the author is dead, his or her right
may be exercised by (or if the author was a
joint author, the author's interest may be
"voted" by) majority action of the owners of
more than one half of author's termination
interest, such interest being owned as follows:
(i) by surviving spouse (if no children
or grandchildren)

(ii) by children and surviving children of
deceased child (if no surviving spouse)
per stirpes and by majority action or
(iii) shared, one half by widow and one
half by children and deceased child's
children.

(3) Effective date of termination ($203(a)(3))
(a) designated time during 36th through 40th
year after grant or

84

(b) if grant covers right of publication,
designated time during five year period
beginning on the earlier of the following
dates:

(i) 35 years after publication

(ii) 40 years after grant.

17 USC $304 (c) (6) (D) (1978).

85 Bourne v. MPL Communications, 675 F. Supp. 859 (SDNY 1987),

27

(4) Manner of terminating

(a) written and signed notice by required
persons to "grantee or grantee's successor
in title" (S203 (a) (4))

(b) specification of effective date, within
above limits ($203 (a) (3))

(c) form, content, and manner of service in
accordance with Copyright office regulations
(S203 (a) (4) (B); 37 CFR $201.10)

(d) recordation in Copyright office before
effective date ($203 (a) (4) (A)

(5) Effect of termination

reversion to author, authors, or others owning
author's termination interest (including those
who did not join in signing termination notice)
in proportionate shares (S203(b)).

(6) Exceptions to termination

(a) work made for hire are not subject to termination;
(b) dispositions made by will are not subject to
termination; 86

(c) derivative works prepared under a transfer or
license executed prior to termination may continue to be
utilized, but with no right to make a new derivative
work (S203 (b) (1)

(d) rights that arise under other federal statute or
under any state or foreign law are not affected
(S203 (b) (5)).

(7) Further grants of terminated rights (S203 (b) (3))
(a) must be made by same number and proportion of
owners required for termination, then binds all
(S203 (b) (3))

(b) must be made after termination, except, as to
original grantee or successor in title, may be made
after notice of termination (S203(b)(4)).

The key distinctions between termination rights under Section 304 (c) and 203 may be summarized as follows:

Section 304 (c)

Grants covered

Section 203

Before January 1, 1978

On or after January 1, 1978

86

See Larry Spier, Inc. v. Bourne Co., 953 F.2d 774 (2d Cir.

87 The reason for limiting the Section 203 termination right to the author was explained as follows in the Register of Copyrights' 1965 report, "as a result of the present renewal provisions, a large number of binding transfers and licenses covering renewal rights have been executed by the author's widow, children, and other statutory beneficiaries, as well as the author himself. We believe that, for example, where the author's widow was the proper renewal claimant but had previously executed a transfer of her renewal rights, she should be able to gain the extended term after the present 28-year renewal period is over." SUPPLEMENTARY REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION OF THE U.S. COPYRIGHT LAW: 1965 REVISION BILL, 89th Cong., 1st Sess. 96

29

Section 203 also poses the following conundrum in its interrelation with Section 304 (a). Works first copyrighted as late as 1977 enjoy both a termination right and a renewal right. If the author's renewal contingency does not vest, there may be no termination right at all, since post-1977 grants by other renewal beneficiaries are not terminable under Section 203. Moreover, suppose a grant is made in 1978 by an author who later decides to terminate at the earliest possible moment. To exercise the 35-year termination right in 2013, the author may give notice 10 years earlier, in 2003. Although Section 203 provided (as does section 304 (c)) that the future rights to be terminated "vest" upon service of such notice, the renewal provision still must be taken into account, since 2003 is only the 25th year of the first term copyright. If the author dies shortly after service of the termination notice and the author's widow(er) renews two years later, what is the effect of the author's termination notice?88

The astonishing complexity of these provisions amply demonstrates why they have not served their purpose of permitting authors and their families to get a second bite at the apple, despite Congress's 86 year effort to do so. There is no reason to perpetuate such an obviously flawed system. The solution is simple, obvious, and effective: vest the proposed new 20 years directly in the author or his heirs.

H.R. 989

H.R. 989 seeks to extend the term of copyright protection by adding on an extra 20 years for both "old act" and "new act" works. New act works by individuals will go to life of the author plus 70 years. New act works that are made for hire, anonymous, and pseudonymous works and old act works will go to a term of 95 years from first publication, or 120 years from creation, whichever Occurs first. The basic rationale for this increase is the reciprocal nature of the European Union's 1993 term directive.

In order to harmonize the various laws of its member countries toward the goal of a single market without (internal) trade barriers, the European Union ("EU") has issued a number of directives establishing a single law for all EU countries.89 Some of these directives have been in the field of intellectual property, including copyright. In the case of term of copyright protection, most EU countries have a term of life of the author

88

See Dreben, Section 203 and a Call for a Hurried Review, THE COPYRIGHT ACT OF 1976: DEALING WITH THE NEW REALITIES 229, 232-233 (N.J. Copr. Soc'y 1977).

89

The directives are not self-executing: they must be