2009-2010 Copyright Grant Termination Cases of Interest
Originally posted by Inherited Copyright and Song Catalog lawyer Tamera Bennett on the Create Protect blog in 2010.
Copyright grant termination notices under sections 203 and 304 of the U.S. Copyright Act have been hot topics in the news and at the courthouse the past 12 months.
2013 is the first year that termination notices can be effective under 17 U.S.C. Section 203 . . . if notice of termination was proper. Some of the copyright grant termination cases gaining recent attention include:
U.S. Supreme Court declines to hear appeal of John Steinbeck estate. The Second Circuit overturned a lower court's decision and maintained copyrights assigned to Penguin Book Group from Steinbeck's widow. This extremely fact specific case turned on the fact that Steinbeck's wife terminated and renegotiated Steinbeck's 1939 agreement with Penguin. This renegotiation in 1994 "cut-off" the rights of Steinbeck's children from his first marriage. Penguin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied 2009.
A Southern District of New York judge ruled the heirs of comic artist Jack Kirby, were subject to transactional jurisdiction under a New York statute by sending copyright transfer termination notices pursuant to 17 U.S.C. 304(c). More information about the case is found at Marvel Worldwide, Inc. v. Kirby, 756 F. Supp. 2d 461 (S.D.N.Y. 2010) as well as the opinion at Marvel Worldwide, Inc. v. Kirby, 777 F. Supp. 2d 720 (S.D.N.Y. 2011). And with a decision from the Second Circuit Court of Appeals in 2013 holding “the district court was correct in concluding that the works at issue are "works made for hire" under section 304(c).” Marvel Characters, Inc. v. Kirby, 726 F. 3d (2nd Cir. 2013).
Charlie Daniels' song “The Devil Went Down to Georgia,” was written in 1979. But, the song was subject to a contract signed with Universal Music Publishing Group pre-1978. This possible "gap" in the copyright law between Section 203 and Section 304 is under review at the Copyright Office. UPDATE: The US Copyright Office ruled “gap” grants may be subject to termination and provide guidance in the Copyright Office Notice of Termination post. The US Copyright Office concluded that gap grants may be terminated under section 203 because, as a matter of copyright law, a transfer that predates the existence of the copyrighted work cannot be effective (and therefore cannot be executed) until the work of authorship (and the copyright) come into existence. In the case of gap grants, the US Copyright Office may record a notice of termination under section 203 if the notice states that the date of execution for the grant is the date that the work was created.
Superman sends valid copyright termination notices. This blog post gives some great insight to what is required to send a valid notice of copyright grant termination under 17 U.S.C. Section 304(c). Siegel v. Warner Bros. Entertainment Inc., 658 F. Supp. 2d 1036 (C.D. Cal. 2009) and Siegel v. Warner Bros. Entertainment Inc., 690 F. Supp. 2d 1048 (C.D. Cal. 2009).
