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The Copyright Act of 1976 decrees that the author shall have a right exercisable only once for each separate literary work under exclusive license and for a brief window of time after 35 years from the date of a work’s publication to terminate a license. (There are some qualifications to this, but not necessary to explain the concept). There are two provisions concerning statutory termination, one [Section 304(c)] relates to literary works published prior to January 1, 1978; the other [Section 203] relates to literary works published after January 1, 1978. Both sections can be thought of as gifts from Congress to authors, or their estates, or spouses and children to renegotiate with the licensee of an economically valuable work or terminate licenses entered into at the beginning of an author’s career when he or she was in an unequal bargaining position with the licensee. We are going to confine our comments to Section 203, for post-1978 publications. The procedures for exercising the right are complicated.
If your literary work was published in 1978, 2013 is an important (in fact, the opening) year because if you acted properly in accordance with the time requirements for notice you are either in the process of renegotiating the license or taking steps to terminate an exclusive license for further exploitation with another licensee. If you started publishing in 1988, to take a random subsequent year, your important year is 2023, which means that this year, 2013 is the opening year for giving notice. Notice can be served at anytime between 2013 and 2021.
What was the purpose of the Act and how does it work? In its Report on the passage of the Copyright Act of 1976 the House of Representatives stated that “The purpose of the Act was to “safeguard[ ] authors against unremunerative transfers” [that is, transfers at the beginning of their careers] and address “the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.” H.R. Rep. No. 94-1476, at 124 (1976). Section 203 reads in pertinent part:
In the case of any work other than a work made for hire, the exclusive or nonexclusive grant
of a transfer or license of copyright or of any right under a copyright, executed by the author
on or after January 1, 1978 … is subject to termination.
In other words, you have to own the copyright to be eligible to terminate the license. This issue has come up in some cases involving the superman character. There are no termination rights because the cartoonists created the superman stories and character as works made for hire.
You are familiar I know with the standard grant of rights provision in a publishing contract. It states that the grant is exclusive to the Publisher for “the term of copyright and all renewals thereof.” Well, this is not exactly accurate because 35 years from publication of a literary work is likely to be less than halfway through the current term of copyright which is life of the author plus 70 years. Nothing in the grant of rights language takes away the author’s statutory termination right which is non-waivable. In order to receive the benefit of the Act the author has to give notice to the licensee at least 2 years before the date of termination. The notice can be served anytime within a 10 year window preceding the anniversary date of the publication year. In other words, for a termination to be effective in 2013, notice had to have been given between 2003 and 2011. If notice was given in 2012, the earliest date for termination would be 2014.
The problem is that there is another window, a 5 year window. In other words, if the critical year is 2013 the window closes in 2018 so that if the notice is not served between 2008 and 2016 the right is irretrievably lost. Who benefits? The author if he or she is still living, the author’s estate if there is no living spouse and children, or living spouse and children if there are any. If there are only children and grandchildren, the termination interest can only be exercised by the action of a majority of them. Very, very complicated particularly if the family is at odds with each other.
A writer’s income generally comes from royalties and licensing revenues for works which are protected by copyright. Section 102(a) of the U.S. Copyright Act states that “original works of authorship fixed in any tangible medium of expression” are protected by copyright. By definition in Section 102(b) ideas and concepts do not have copyright protection. A writing known in the entertainment industry as a “series treatment” which embodies an idea developed for a television series is protected in part and unprotected in part. If there is no statutory copyright protection for “thought creations” the creator’s right to compensation must come from contract. Binding a party to whom an idea or concept has been disclosed does not necessarily require a written contract. An implied or quasi-contract may be sufficient.
Forest Park Pictures and others v. Universal Television Network, Inc. reached the Second Circuit Court of Appeals (which sits in New York) after a judgment dismissing the complaint. The case concerned the obligation of USA Network to pay for using a concept it received from the plaintiffs/creators for its television series. There was no written contract but plaintiffs alleged an implied promise to pay reasonable compensation if the concept was used (a quasi-contract). According to Forest Park Pictures, USA Network misappropriated its idea by producing its own television series based on the same concept.
After submitting the series treatment Forest Park met with USA Network’s representative. The complaint alleges defendant scheduled the meeting “for the express purpose of hearing Plaintiffs pitch their show.” Defendant knew “that writer-creat[o]rs pitch creative ideas to prospective purchasers with the object of selling those ideas for compensation” and “that it was standard in the entertainment industry for ideas to be pitched with the expectation of compensation in the event of use”…. And, at the meeting, “[i]t was understood that Plaintiffs were pitching those ideas with the object of persuading [defendant] to purchase those ideas for commercial development.” The parties exchanged further communications in the week following their meeting but then discussions ended and they had no further contact.
The threshold issue was whether dismissal of the complaint on the ground of preemption by the Copyright Act was premature. The District Court held in dismissing the complaint that the subject matter of plaintiffs’ breach of contract claim – the character biographies, plots, and story lines it pitched to defendant “fall within the subject matter of the copyright laws” and concluded
Plaintiffs’ breach-of-implied-contract claim based on his alleged right to be compensated for the use of his idea for a television series is equivalent to the exclusive rights protected by the copyright law and is therefore preempted by the Copyright Act.
The Court of Appeals viewed the preemption issue differently. It held in a decision in June 2012 that the complaint “adequately alleged the breach of a contract that included an implied promise to pay” and plaintiffs’ rights to compensation “are not equivalent to those protected by the Copyright Act.”
An enforceable implied-in-fact-contract is an alternative theory for compensation that does not rest on the Copyright Act. Misappropriation is not equivalent to copyright infringement. The question is “whether the Complaint actually pleads an enforceable implied-in-fact contract.” Defendant argued that the “Complaint falls short because there was no meeting of the minds over the price term.” But under California law where the contract was to be performed the absence of a specific price term is not fatal. “[A]n implied-in-fact contract can have an open price term to be filled in by industry standards.”
A disclosure expressly conditioned on a promise of payment is actionable against a party who knew or should have known that such a condition was implied. The Circuit Court pointed out that California has long recognized that an implied-in-fact contract may be created where the plaintiff submits an idea (the offer) that the defendant subsequently uses (the acceptance) without compensating the plaintiff (the breach). Of course, Forest Park will still have to prove at trial that such an industry standard price exists and that both parties implicitly agreed to it. That Forest Park may fail to prove its claim, however, does not render the contract unenforceable as a matter of law.
Originally published as a Guest Blog on Writer Beware® September 7, 2012
Authors create the content blog aggregators need for their web collections. Each gains in different ways. For the aggregator, the greater the variety of material and the steadier the receipt of content the more valuable the aggregated website. Because aggregating content is a business not a charitable operation, it is natural that aggregator agreements to publish content will primarily reflect the aggregator’s interests. Benefits to authors come in the form of readership and (possibly) recognition which may be a fair exchange even the author is un- or minimally compensated for her work. However, particularly productive authors will wish to retain control over their contributions and may find aggregators’ “Terms of Use” unaccommodating. It is a fair question, What does an author give up in exchange for granting a license for the privilege of having her content aggregated with others and accessible to the searching public?
The consideration in exchange for a license should begin with an appreciation for copyright. This is so because all agreements between publishers and authors start with a grant of rights. The Copyright Act states that “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression” (§ 102). Content submitted for aggregation is a tangible medium of expression, but remedies for infringement of content come through registration. There is no immediate remedy for unregistered content however egregious the taking. Neither the granting of rights nor the publication of content protects an author against infringement. Copyright registration is not expensive but it may be (or may be thought to be) uneconomical.
The questions concerning aggregator “Terms of Use” are not simply academic. They can affect an author’s future. Active content creators produce volumes of original material which can be collected and reworked into other formats. It is one thing to confer limited rights of publication and distribution of content on a nonexclusive basis and another to lose control of other statutory rights. One of the exclusive rights an author has under the Copyright Act is the right “to prepare derivative works based upon the copyrighted work” (§ 106(2)). Exclusive licenses are not typical in aggregator agreements, but there is a form of nonexclusive license that has some worrying features.
It is prudent before granting rights for the author to carefully examine the terms under which the aggregator accept content in exchange for publication. Not all terms are equally beneficial to the author. There are different monetizing models, all of which have the ultimate purpose of creating revenue for the aggregator. Some aggregators create libraries of material which are accessed for payment. Other aggregators generate revenue from the advertising on their websites. Some models may share the revenue with authors.
The potential problems are illustrated by several examples. In drawing attention to terms in the following agreements we are not suggesting any deliberate attempt to benefit at the author’s expense, but we are pointing out that the agreements are essentially on a “take it or leave it” basis, which is always a sign for caution.
1. The ODP (Open Directory Project) is a comprehensive directory of Web resources.
In exchange for ODP’s agreement to include an author’s work the author agrees:
To grant AOL LLC. Corporation a non-exclusive, royalty-free license to use, publish, copy, edit, modify, or create derivative works from my submission.
The catch is “edit, modify or create derivative works from my submission.” Although the ODP license is nonexclusive the author grants AOL extensive rights to the blog content. The author can terminate the license but AOL owns any derivative work it creates, but the derivative works created from the author’s submission are owned by the aggregator “royalty free.”
2. BLOGLINES is an aggregator of syndicated news feeds operated by WYBS.
The Bloglines Terms of Service assert that “WYBS does not claim ownership of the Content you place on your Private Page or Public Page,” but “[b]y uploading, submitting or otherwise disclosing or distributing content of any kind on the WYBS website or otherwise through the Bloglines Service, you” – here comes the kicker –
[You] Grant to WYBS, its affiliates and their assignees the perpetual, irrevocable, non-exclusive, royalty-free right to use, reproduce, display, perform, adapt, modify, distribute, make derivative works of and otherwise exploit such content in any form for the purpose of providing the Bloglines Service, including without limitation, any concepts, ideas or know-how embodied therein….
Even though Bloglines disclaims ownership of blog content, the author has lost control of her work. She has granted WYBS the right to “exploit such content in any for” and in any way it chooses to on a “perpetual [and] irrevocable” basis that includes the right “without limitation … to exploit such content … an any concepts, ideas or know-how embodied therein.” The “non-exclusive” is meaningful only to the extent that the author has the means to exploit the work in the same fashion as the aggregator.
3. Curata is a content curator for businesses which describes itself as “how smart marketers produce a consistent stream of high-quality content.”
Curata’s Terms of Use state that:
“By submitting, posting or displaying Content you give us an irrevocable, worldwide, royalty-free, and non-exclusive license to reproduce, adapt, modify, translate, publish, publicly perform, publicly display and distribute any Content which you submit, post or display on or through, the Website. You represent and warrant to us that you have all the rights, power and authority necessary to grant the above license. You agree that you are solely responsible for (and that we have no responsibility to you or to any third party for) any Content that you create, transmit or display or permit to be created, transmitted or displayed while using the System and for the consequences of such actions (including any loss or damage which we may suffer) by doing so.”
While Curata does not use the term “derivative” the author has all but granted it in the terms “adapt, modify … publicly perform [and] publicly display” the substance of the work.
In each of these examples, the author has licensed aggegator the right to exploit her work. It is not as though she does not have the same rights or is inhibited in licensing to others but the exploiting by aggregators is without approval, and without approval she has no control. Authors should assess the benefits, consider what they are prepared to give up in exchange for publication of their works to audiences larger than they themselves can attract and make their decisions with knowledge that they lose control of many of their copyright rights. Productive authors should be particularly careful because for them original content can be collected or packaged in different formats or reworked into books for traditional or e-publishers.
Whether money is the motive for writing – “[n]o man but a blockhead ever wrote, except for money” (Samuel Johnson) – or only one of the rewards for those lonely hours of composition, how does the author get paid? Before she reaches the “royalties” clause in her publishing contract she has to negotiate the “grant of rights”. What is she giving up for what she is getting? In exchange for granting rights that may extend beyond the grave, she earns royalties
Royalties were not an established convention in Samuel Johnson’s writing lifetime. What is the current practice? Royalties for trade books are typically based on list or catalog price, although some publishers pay on net receipts and net receipts are offered by traditional publishers for e-books. List price is better for the author. If royalties are based on net, it is crucial for the deducted expenses to be clearly defined. Thus, if the list price of a hardcover book is $36. and royalties (before escalations) are 10% the author’s account will be credited $3.60 per sale. Trade paperback and mass market paperbacks are similarly treated. It matters little to the author that the publisher discounts her books to a retailer because the discount does not affect royalties.
E-books are priced different. It makes a difference whether the publisher subscribes to the “agency” or “wholesale” model. This is so because under the agency model (which five of the big six publishers negotiated with Apple in 2010 and to which presently all six subscribe) the publisher rather than the distributor sets the price. The typical royalty provision for e-books reads “If published as an e-book edition, 25% of the net amount actually received from such sales.” If the distributor (Apple under the “agency” model) takes a “commission” of 30% the author will receive 25% of 70%. If the e-book price is fixed at $9.99 the publisher will credit the author’s account $1.75. (John Sargent, CEO of Macmillan in his letter to Staff following an unsuccessful meeting with Amazon on the “agency” model in January 2010, before Amazon acceded to it, stated that “[o]ur plan is to price the digital edition of most adult trade books in a price range from $14.99 to $5.99. At first release, concurrent with a hardcover, most titles will be priced between $14.99 and $12.99. E books will almost always appear day on date with the physical edition. Pricing will be dynamic over time.”).
Independent e-book publishers subscribe to the “wholesale” model. A typical e-book contract may provide for
a royalty of fifty percent (50%) based upon Publisher’s Net Receipts for the first 2,500 units sold and sixty percent (60%) based upon Publisher’s Net Receipts thereafter. Net Receipts shall mean the amount actually received by the Publisher from the sale of the electronic editions of the Work, net of the following items: charges of third parties which sell the Work through websites or other distribution channels.
Assume an e-book has a list price of $9.99 and a discounted price of $4.99 and that the platform distributor (Amazon or Barnes & Noble) under the “wholesale” model) takes 30%, then publisher will credit author’s account $3.50 (at 50%) and $4.20 (at 60%). If the “agency” model survives an anticipated Justice Department lawsuit against the five publishers who crafted it, consumers will continue to lose on price and authors (at 25% of net) on royalties.
To have a work included in a compilation is a goal eagerly sought after by authors. It is a distinction for a story or article to appear in an anthology. What should the author be alert to? The question comes up in discussing digital aggregation of compilations in the context of authors’ rights under the Copyright Act. The answer is found in sections 103 and 201(c) of the Copyright Act as construed in decisions from the United States Court of Appeals for the Second Circuit and the Supreme Court.
Compilers and authors have complementary rights. Section 103 provides in pertinent part
The copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. (Emphasis added)
Authors typically grant exclusive first publication rights to the compiler but non-exclusive rights thereafter. A non-exclusive right is not a transfer of rights under the Copyright Act. A “compilation” is defined in Section 101 as “a work formed by the collection and assembling of preexisting materials.” It includes “collective works” which are works “in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”
Section 201(c) of the Copyright Act is composed of two sentences. The first concerns the author; the second the compiler. The first provides: “Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution.” The second sentence defines the compiler’s rights:
In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. (Emphasis added)
Legally, author and compiler have separate rights under the Copyright Act, but the compiler’s “privilege of reproducing and distributing the contribution” after its initial appearance is limited.
Imagine that an author has contributed a story to a compilation which is one of a series, for example a quarterly anthology of short stories. The compiler wishes to have the entire series made available to future readers by an electronic database provider. Essentially two scenarios can be envisioned. In the first, the compiler licenses the series of compilations (the archives) to a third-party who aggregates the material in electronic and CD-ROM databases without the author’s permission. The compiler assumes the “privilege” to license the individual stories in the compilation. In the second scenario, the compiler (also without permission) either creates or licenses the compilations for distribution in a format that duplicates the compilations page for page.
The first scenario was the subject of a case decided in favor of authors, Tasini v. New York Times, 206 F.3d 161 (2nd Cir. 1999), affirmed by the Supreme Court, 533 U.S. 483 (2001). The second was decided in favor of the compiler, Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2nd Cir. 2005). Authors win in the first case because section 201(c) does not permit the author of a collective work (the compiler) to license an individual contribution without the author’s agreement to “express[ly] transfer … [her] copyright.” The compiler wins when the medium of reproduction preserves the original format.
The author of an individual contribution to a collective work owns the copyright to that contribution. Any unauthorized reproduction and distribution generally infringes the copyright unless such use is specifically protected by the Act. There are two sides to this principle: Tasini illustrates one; Faulkner the other. In Tasini, individual contributors’ works were licensed by the compiler for inclusion in electronic databases. The presumption under section 201(c) is that the author of a short story (or article, as in Tasini) “gives the publisher the author’s permission to include the article in a collective work … [as well as] a non-assignable, non-exclusive privilege to use the article as identified in the statute.” The Court held that section 201(c) does not permit compilers (or, as in Tasini, publishers”) to license copyrighted works where they “may be retrieved individually or in combination with other pieces originally published in different editions of the periodical or in different periodicals.”
Putting its decision in context with Tasini, the Court in Faulkner emphasized the different factual circumstances between the two cases. “Crucial to our decision” (in Tasini) “was the fact that each article had to be retrieved individually from the particular database and made ‘available without any material from the rest of the periodical in which it first appeared’.” The Supreme Court held that “publishers are not sheltered by §201(c) because
the databases reproduce and distribute articles standing alone and not in context, not “as part of that particular collective work to which the author contributed, “as part of … any revision thereof, or “as part of … any later collective work in the same series.”
In contrast National Geographic did reproduce the back issues of the magazine “as part of the collective work to which the author contributed or as part of any ‘revision’ thereof’.” National Geographic is entitled to the § 201(c) “privilege” because it converted the “intact periodicals (or revisions of periodicals) from one medium to another.” The Court noted that
Each issue of the magazine was scanned two pages at a time into a computer system. As a result, the [complete digital collection] user sees exactly what he or she would see if viewing an open page of the paper version, including the fold of the magazine.
Having complete digital collections available for the reading public is valuable – individual works would otherwise be lost in the accumulation of newer works. However, to scan separate individual works into a database must be expressly agreed upon by each author to avoid exposure to liability for copyright infringement. A digital database should benefit authors as well as readers and compilers.
The principal legal mechanisms for protecting copyright of works recopied on the Internet without permission and in violation of an author’s copyright is laid out in the Digital Millennium Copyright Act (DMCA). The major aggregators of content have developed policies and take down forms in compliance with the DMCA. If a copyright owner finds unlawful copying of her material she can request the Googles of the world to take it down. Google and the other aggregators have developed copyright-infringement notification policies for both DRM free (digital rights management) and digitally accessible works with embedded copyright protection systems. This short note only deals with DRM free materials, § 512 of the Copyright Act. Materials embedded with copyright protection systems are covered in § 1201 et seq. of the Act.
The Google notification form asks a series of questions that match the statutory list in §512 (c)(3)(A) including whether the complained about material is a copyright infringement. The series ends with this notice:
IMPORTANT: If you knowingly misrepresent that material or activity is infringing, you may be subject to liability for damages. Accordingly, if you are not sure whether material available online infringes your copyright, we suggest that you first contact a lawyer. Please also note that your message to us may be forwarded to the party who filed the original copyright complaint.
This intimidating coda is based on § 512(f) of the Copyright Act. It provides:
Any person who knowingly materially misrepresents under this section —
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys’[] fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.
There is not a great deal of case-law interpreting this provision of DMCA, but federal courts that have addressed the provision have offered additional gloss on the meaning of the terms “knowing” and “material misrepresentation.” “Knowingly” has been interpreted to mean ‘that a party actually knew, should have known if it acted with reasonable care or diligence, or would have had no substantial doubt had it been acting in good faith, that it was making misrepresentations.” Online Policy Grp. v. Diebold, Inc., 337 F.Supp.2d 1195, 1204 (N.D.Cal. 2004). And “[a] material misrepresentation is one that ‘affected [the infringer or service provider's] response to a DMCA letter’.” Capitol Records, Inc. v. MP3tunes, LLC, 611 F.Supp.2d 342, 346 (S.D.N.Y. 2009) (quoting Online Policy Grp.,337 F.Supp.2d at 1204).
Let us get our bearing. Copyright protects “original work[s] of authorship fixed in any tangible medium of expression,” regardless of whether the work has been registered. As a general rule, infringement is not actionable until the author has a certificate in hand (although this may not be true for all Circuits). That is, the author cannot commence or maintain an action in federal court until the work is registered. But the DMCA is a self-help procedure. Only if the service provider refuses to take down the infringing (or alleged infringing copy) is the author authorized to proceed further with injunctive and legal relief. There are questions that courts have not yet reached in commencing an action for infringement of unregistered material. The Copyright Office provides some information on its website.
Copyright law protects authors who have registered their works. They are generally well attuned to copyright for their separately standing works, but less so when it comes to shorter works accepted for publication in compilations such as collections and anthologies. Section 103 (a) of the Copyright Act states that “[t]he subject matter of copyright … includes compilations.” A “compilation” is a collection of items in which a number of separate and independent contributions are collected into an organic whole. However, § 103(b) provides that the
copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.
The statutory language makes clear that there are distinctions between the compilation “author” and “authors” of works collected in the compilation. Section 103 tells us that a compilation can be copyrighted, but it “does not imply any exclusive right in the preexisting material.” In fact, “[t]he copyright in such work is independent of” the copyrights in the included works. The provision continues:
The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
What rights a compiler may have depends on the nature of the relationship with the author and of the material collected in the compilation. The copyright in the compilation or collection is one form of protection; a separate copyright in the component works is another. Depending upon whether the grant of rights to poetry or short story is exclusive or nonexclusive to the compiler, to be fully copyright protected requires the compiler to register his copyright and the author to register hers. Poetry and short stories included in the compilation that are copyrightable are separately entitled to copyright protection.
The published compiled volume should include two different notices to effectively comply with the Copyright Act. There should be a compilation notice (which protects the author/compiler) and separate authorial notices for the included works (which protect the contributors). (As a separate note, materials included in a compilation that have fallen into the public domain, poetry and short stories for example, do not spring back to copyright life or in any way benefit a deceased author’s estate. The works remain available for use by the public, except to the extent that the compiler has added copyrightable additions:
The copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.
Infringement that violates the rights of the compiler may also violate the rights of a contributing author, but without a registered copyright of her own the author has no recourse. Why attention to statutory requirements is important is illustrated in cases adjudicating copyright claims of infringement of photographs. What is true of photographs also applies to poetry and short stories. In Bean v. John Wiley & Sons, Inc., CV 11-08028 (D. AZ August 3, 2011) the defendant claimed the photographs had no copyright protection because the registration did not comply with the registration requirements of the Copyright Act. The Court in a separate prior action in which Bean had sued Houghton Mifflin Harcourt Publishing Co., (unpublished decision) concluded that “Corbis’s registration of six compilations containing thousands of photographs by different authors was not effective in registering the individual works in the compilations to the individual authors.”
The Copyright Office does not specifically address registrations works included in a compilation and it is unclear precisely what the law requires the compiler to do. The most recent announcement on this issue is Pacific Stock v. Pearson Education, Inc., 11000423 (D. Hawaii January 11, 2012). The defendant argued that plaintiff did not have valid copyrights for individual works registered only as parts of compilations of various artists. The message from Pacific Stock and other cases, including a 2010 case from the Southern District of New York, Muench Photography, Inc. v. Houghton Mifflin Harcourt Publishing Company and R.R. Donnelley & Sons Company, 712 F.Supp.2d 84, 95 (S.D.N.Y. 2010) is that while group registrations are valid as to the compilations they do not protect the individual works. Therefore, the prudent course is for the compiler to include copyright notices for all contributions including the compiler’s and an author to separately register her own copyright.
Once in the public domain content (which includes characters) is free; to copy or create derivative works. P.D. James’ Death Comes to Pemberley and a continuing stream of novels featuring Sherlock Holmes are recent examples. Until works fall into the public domain content and characters are not free. They are copyright protected. Authors (defined in the broadest sense under the Copyright Act) are entitled to payment.
There are two cases from the U.S. Supreme Court of particular importance concerning the public domain: Eldred v. Ashcroft, 537 U.S. 186 (2003) and Golan v. Holder, 10-545 (January 18, 2012). Both involved Constitutional challenges to laws passed respectively in 1998 and 1994. The challenge in Eldred was suspension of works falling into the public domain and in Golan restoring a class of works to the public domain. The Court in Golan explained that “Congress recurrently adjusts copyright law to protect categories of works once outside the law’s compass” and gives as an example “extend[ing] copyright protection to foreign works in 1891.” The Eldred challenge involved another kind of copyright “adjustment.”
First, some context. During the term of copyright an author or her exclusive licensees controls exploitation of a work. After expiration, works fall into the public domain for use by individuals and businesses whose products and services build on copyrighted works. “On occasion, however, Congress has seen fit to protect works once freely available,” although even they have their term. “[N]o one … acquires ownership rights in the once-protected works.”[Golan]. Works deriving from once-protected works, of course, are entitled to their own copyright. Presently, the term of copyright is life plus 70 years. The first U.S. Copyright Act of 1790 granted authors a limited monopoly of 28 years, 14 on registration and 14 on renewal. Prior to the present Copyright Act of 1976 (effective January 1, 1978) the term had been 56 years, 28 and 28.
The current term of life plus 70 years was driven by United States’ adoption in 1988 of the Berne Convention (1886), but not fully implemented until the passage of the Copyright Term Extension Act of 1998 (CTEA), generally referred to as the Sonny Bono Act or (humorously) the Mickey Mouse Act. This Act did two things: extended copyright term by 20 years (conforming in some but not all respects to the Berne Convention) and suspended by like years works falling into the public domain. It effected only authors who had registered for copyright in the United States. It did not effect foreign authors with no registration in the U.S. As a result, and only for domestic copyrights, no currently protected works will fall into the public domain until January 1, 2019.
The 20-year suspension triggered an unsuccessful Constitutional challenge in Eldred. In rejecting the Petitioners’ argument, individuals and businesses whose works and services build on copyrighted works will have to wait for another 7 years. Wait, that is for domestic copyrights to expire. However, works by foreign authors began falling into the public domain with the result that “orchestra conducts, musicians, publishers, and others … [began] enjoy[ing] free access.”
This anomaly (lower protection for foreign authors inconsistent with the Berne Convention) was rectified by the Uruguay Round Agreements Act in 1994 (URAA). The URAA granted foreign authors the protection they did not previously have under U.S. copyright law and triggered another Constitutional challenge that was finally resolved in the Golan case. The ultimate purpose of the adjustments to the Copyright Act were to protect U.S. authors, which could only be accomplished by protecting foreign ones.
As in Eldred, Petitioners were individuals and businesses who rely for their livelihoods on exploiting public domain works. They complained that restoring works that had already fallen into the public domain “violates the ‘limited [t]imes restriction by turning a fixed and predictable period into one that can be reset or resurrected at any time, even after it expires.” The Court rejected this analysis. “The terms afforded works restored … are no less ‘limited’ than those the CTEA lengthened.” In other words, all works in due course will fall into the public domain — the “limited [t]imes of the U.S. Constitution. It just may not be in one’s lifetime.
As also in Eldred, the Supreme Court in Golan concluded (in the words of the Tenth Circuit Court of Appeals whose judgment it affirmed) that “the law was narrowly tailored to fit the important government aim of protection U.S. copyright holders’ interest abroad.” Congress recognized the disruption in removing works from the public domain by building into the URAA a mechanism for relieving “reliance parties” of some of the impact by deferring the date from which enforcement runs. The Court concluded that the law “does not transgress constitutional limitations on Congress’ authority.”
Not surprisingly, laws that affect intellectual property rights are bound to be unevenly received by winners and losers. As the Supreme Court explained in another case, Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) “[T]he text of the Constitution makes plain, it is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors or to inventors in order to give the appropriate public access to their work product…. [T]hat task involves a difficult balance between ‘competing interests’ as reflected in the frequent modifications of the relevant statutes.”
The Copyright Act §101 defines a “joint work” as “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of the unitary whole.” Embedded here are several difficult concepts. “Intention” from whose perspective? And, what contributions qualify for joint authorship? The questions are important because “authors of a joint work are co-owners of copyright in the work” and “[a] joint owner of a copyright … cannot be liable to a co-owner for copyright infringement because a copyright owner cannot infringe his own copyright.” Strauss v. Hearst Corp., No. 85 Civ. 10017, 1988 WL 18932, at 5 (S.D.N.Y. Feb. 19, 1988). “Intention” is not presumed by a party declaring a right, but an inference drawn from the factual circumstances in each individual case.
For another person to enjoy the benefits of copyright ownership in a work, it is not sufficient that he merely assist the author in creating the work. If it is not intended for the “contributions to be merged into inseparable or independent parts of the unitary whole” it is not a “joint work.” The Second Circuit offered as an example the work of an editor: “a writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will consist of additions of copyrightable expression… yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work.” Childress v. Taylor, 945 F.2d 500, 507 (2nd Cir. 2001).
In Childress the plaintiff playwright sued for copyright infringement to which the defendant defended on the theory that she was a joint author. This was based on her contributions, which consisted of ideas and research. “Many people” (explained the Court) “can be said to ‘jointly labor’ toward ‘a common design’ who could not plausibly be considered co-authors.” This brings up a question of what exactly is meant by the statutory phrase that “their contributions be merged into inseparable or interdependent part of the unitary whole.” The Court explained that
Parts of a unitary whole are “inseparable” when they have little or no independent meaning standing alone. That would often be true of a work of written text, such as the play, that is the subject of the pending litigation. By contrast, parts of a unitary whole are “interdependent” when they have some meaning standing alone but achieve their primary significance because of their combined effect, as in the case of the words and music of a song.
Contributions are scaled. In the Childress case, plaintiff was asked to write a play. The defendant, an actress who portrayed the subject of the play on stage provided research material, “[b]ut there was no evidence that these aspects of [defendant's] role ever evolved into more than the helpful advice that might come from the case, the directors, or the producers of any play. A playwright does not so easily acquire a co-author.”
However, the “fully intend” prong does not mean that a collaborator is denied protection under the copyright laws simply because the other authors refuse to recognize her as a co-author. The “intent test requires a ‘nuanced inquiry into the factual indicia of ownership and authorship’ such as ‘how a collaborator regarded herself in relation to the work in terms of billing and credit, decision making, and the right to enter into contracts’.” BSN Medical, Inc. v. Parker Medical Associates LLC., 3:09cv15 (W.D.N.Carolina Nov. 17, 2011), citing Thomson v. Larson, 417 F.3d 195, 201 (2d Cir. 1998). If the contribution is less than co-authorship, but more in the nature of offering suggestions and ideas then the parties are “free to bargain for an arrangement that will be recognized as a matter of both copyright and contract law … [while] equal sharing of rights should be reserved for relationships in which all participants fully intend to be joint authors.” Id., 945 F.2d at 508.
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