Listen Today: CLE - Lessons from John Steinbeck's The Grapes of Wrath: Copyright Terminations Under Sections 203 and 304 of the Copyright Act

On September 29, 2020, the Justices of the U.S. Supreme Court will decide whether or not to grant certiorari in Steinbeck v. Kaffaga, a case involving the rights of authors and their heirs to terminate copyright grants.  Copyright terminations have generated a tremendous amount of litigation and uncertainty, this is a case to watch!

To listen or download this one-hour CLE program featuring Copyright Litigation Handbook author Ray Dowd, visit CELESQ here.

 In 1976 and 1998 Congress extended the terms of copyright. Congress intended for authors to receive the full economic benefit of the extended copyright terms by granting authors and their heirs inalienable rights to recapture copyrights. These recaptured copyrights, vesting free of all prior grants, could then be re-licensed on economic terms favorable to authors. To protect authors’ families from disinheritances, late-life lovers or squabbles among over-reaching heirs, Congress preempted state inheritance law and created statutory heirs.

Congress’ statutory scheme benefiting authors and their families has been threatened by recent decisions of the Second and Ninth Circuits that have generated a recent cert petition to the Supreme Court in Steinbeck v. Kaffaga over film rights to The Grapes of Wrath. Many copyright termination disputes are now pending.

Ray Dowd in examines this fascinating case and discusses why understanding the issues at stake and the mechanics of copyright terminations is important for all attorneys dealing with copyrights. Whether you are negotiating a license agreement or advising copyright owners and their heirs on estate planning, copyright termination is a hot issue.

Raymond J. Dowd authored a brief in Steinbeck v. Kaffaga on behalf of amicus curiae the Authors Guild, the Dramatists Guild, the American Society of Journalists and Authors and former Register of Copyrights Ralph Oman.

www.dunnington.com

 Copyright law, fine art and navigating the courts. Attorney and Author

Copyright Litigation Handbook (Thomson Reuters Westlaw 2018-2019) by Raymond J. Dowd

 

Copyright Terminations: Amicus Brief For Authors Guild et al. In Dispute Over Film Rights To John Steinbeck’s Grapes of Wrath

On April 29, 2020, we filed an amicus curiae brief on behalf of The Authors Guild, The Dramatists Guild, The American Society of Journalists and Authors, and former Register of Copyrights Ralph Oman at the United States Supreme Court.  The case involves a dispute among John Steinbeck’s heirs over who should benefit from copyright termination rights under Sections 203 and 304 of the Copyright Act.  The brief argues that a number of federal courts have misinterpreted provisions of the Copyright Act of 1976 and the Copyright Term Extension Act of 1998 that permitted authors to terminate copyright grants and to recapture the copyrights for the periods of time that Congress extended the copyrights.   According to the brief, Congress intended to benefit authors and their heirs when Congress extended copyright terms in 1976 and again in 1998.  Amici curiae argue that the federal courts have frustrated Congressional intent by upholding prior copyright grants that the plain language of the Copyright Act permits authors to invalidate.   Check out the brief here.


www.dunnington.com
 Copyright law, fine art and navigating the courts. Attorney and AuthorCopyright Litigation Handbook (Thomson Reuters Westlaw 2019-2020) by Raymond J. Dowd
 

SDNY: Copyright Transfer Termination Notices Subject California Copyright Heirs To Jurisdiction In New York

Kirby & Roussos Courtesy Wikipedia

In Marvel Worldwide, Inc. v. Kirby, 2010 WL 1655253 (April 14, 2010), SDNY Judge Coleen McMahon found that two defendants, heirs of comic artist Jack Kirby, submitted themselves to transactional jurisdiction under New York's long-arm statute by sending copyright transfer termination notices pursuant to 17 USC 304(c).   The decision discusses acts by non-domiciliaries that may trigger jurisdiction over foreign defendants for the purposes of being subjected to claims relating to the transaction in New York and uses the "minimum contacts" of International Shoe and Worldwide Volkswagen.

The Kirby heirs sent a notice of termination and Marvel responded with a declaratory judgment action.  The heirs moved to dismiss and simultaneously filed an action in California.   The court distinguished transfer termination notices from cease and desist letters which, if properly drafted and addressed (see Copyright Litigation Handbook Chapter 6) ordinarily (there are exceptions and murky case law), absent other contacts with the forum, should not, standing alone, subject the sender to personal jurisdiction in a foreign jurisdiction.

The Marvel v. Kirby decision does not discuss the copyright venue statute, 28 U.S.C. 1400 which provides:

§ 1400. Patents and copyrights, mask works, and designs

(a) Civil actions, suits, or proceedings arising under any Act of Congress relating to copyrights or exclusive rights in mask works or designs may be instituted in the district in which the defendant or his agent resides or may be found.

(b) Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

Copyright Recapture By Authors and Heirs (Ch 7)

An exciting period of negotiating and litigating is starting to pick up: authors and heirs of authors are starting to exercise their rights to "recapture" copyrights that had already been sold to publishers, record companies and other content owners. Content owners will come under increasing pressure to squeeze value from copyrights in their waning years - - and projects involving recaptured properties will dot our cultural landscape for the coming years.

The cases to date have dealt with such important properties as Winnie-the-Pooh, Lassie, Captain America and certain Steinbeck works

For a great article on copyright termination from a living author's perspective (17 U.S.C. 203 - Termination of transfers and licenses granted by the author), check out Margo E. Crespin's "A Second Bite of the Apple: A Guide To Terminating Transfers under Section 203 of the Copyright Act" which is found at the Authors Guild website.

For a cookbook/questionnaire type approach that has a useful discussion of how to figure out whether or when you can get your client's copyright back, check out Creative Commons' ccLabs Termination of Transfer Tool. Read the FAQ - these are the questions that your clients will be asking you in coming years. 17 U.S.C. 304 governs terminations of grants of pre-1978 copyrights by authors and their heirs.

The Crespin article and the Tool are very helpful since the language and meaning of Sections 203 and 304 is very difficult to master.

Trusts and estates attorneys take note! The Copyright Act has a number of succession provisions that trump the language of an author's will. Federal law is said to "preempt" state law in this area.