HOW AUTHORS (AND THEIR HEIRS) CAN
RECAPTURE THEIR PRE-1978 COPYRIGHTS
By Attorney Lloyd J. Jassin
To protect authors of older works from having to “live” with a bad deal they entered into when they had little negotiating skill or leverage, the Copyright Act provides that at the end of 56 years, the author (or if the author is dead, his wife and children or grandchildren), can recapture the last 39 years of copyright. For example, a publishing contract signed in 1948 can be terminated in 2004, provided timely notice of termination is given. As long as the work is not a “work made for hire,” the right of termination cannot be waived — even if there are contractual provisions to the contrary.
The Copyright Act also gives families of deceased authors another opportunity to extract value from copyrighted works. When the author of an older work dies during the initial 28-year term of copyright, that author’s family has the right to reclaim his or her renewal copyright — a further term of 67 years of copyright protection. This added opportunity to get back ownership of copyrights exists even if the author assigned his or her renewal term (or devised it by will) to someone other than his or her family.
These often overlooked, but powerful rights, exist, in part, because young writers, musicians and artists, often signed away their copyrights for little or no money early in their careers. For example, in 1938 Jerry Siegel and Joe Schuster, two young men from Cleveland, Ohio, signed over all of their rights to the Superman character to DC Comics for $130.00 and vague promises of future work. To address this, and similar economic injustices, Congress gave authors (and their heirs) a second chance to strike better financial deals. As a result, starting in 1999, Siegel’s heirs recaptured his rights to the Superman character. Fortunately, you don’t have to be a man of steel to reclaim your rights. The estates of Truman Capote, Norman Rockwell, Lorenz Hart, and many others have availed themselves of these valuable rights.
Termination After 56 Years
Section 304(c) of the Copyright Act, says that a copyright owner (or his or her heirs) can terminate all grants, licenses or transfers of rights (made prior to 1978) beginning on the 56th year after that assignment was made. This allows authors to benefit from laws that extended the term of copyright from 56 years to 95 years. The Copyright Act provides a five year period beginning in the 56th year, in which these grants, licenses and transfers may be terminated. To terminate a publishing contract, the author, or his or her heirs, must file a notice of termination within the time limits specified by the Copyright Act. If not terminated, the agreement will continue for the life of the copyright — or the duration of the agreement.
To understand this valuable right, it is helpful to have a basic understanding of the copyright renewal system. Before January 1978, the duration of all copyrights was split into two consecutive 28-year terms. During the last (28th) year of the initial term, authors were entitled to renew their copyrights for a further term of 28 years. Through a series of amendments to the Copyright Act, the renewal term was extended 19 years, and then an additional 20 years, for a total of 95 years (28+28+19+20=95). If an author dies before renewal time arrives, certain statutory successors (generally, the author’s family, executor or next of kin) are entitled to recapture his or her copyright for the extended term. Since pre-1978 copyrights now endure for 95 years, heirs can recapture up to 67 years (28+67=95). Works published after December 31, 1977 are protected for the life of the author plus 70 years.
The Opportunity to Terminate Knocks Twice: Termination After 75 Years
If you miss the opportunity to recapture the 39-year term of copyright (56 + 39 = 95), you can try again at the end of 75 years to recapture the final 20 years of copyright. This provision allows authors, artists and composers who missed the opportunity to recapture the 19-year term extension provided under the 1976 Copyright, to reap the benefits of the 20-year windfall afforded under the 1998 Copyright Term Extension Act. To take advantage of this new opportunity to terminate, notice of termination must be sent to the proper party no later than 78 years from the date of the original copyright (or, as early as 65 years after initial publication).
The Devil is in the Details
The manner in which notice of termination is given is highly technical and beyond the scope of this article. For example, notice provided prematurely, or too late, can frustrate your efforts to recapture rights. Besides the author’s widow or widower, children and grandchildren, the Copyright Act also permits termination rights to be exercised by an author’s executor, administrator or personal administrator, provided there is no spouse, children or grandchildren. Also, in situations where there are multiple authors, or after the death of an author, more than one individual may hold the right to terminate. In addition, termination notices must be recorded with the Copyright Office prior to the date of termination. Keep in mind that special rules apply to derivative works, such as motion picture versions of books. Despite termination, the right to continue to exploit previously-prepared derivative works (e.g., a motion picture based on a book) may be immune, or safe from termination. This privilege, however, does not extend to preparation of new derivative works based on the work covered by the terminated grant.
Any copyright proprietor wishing to terminate a grant, license or transfer of any copyright rights must provide at least two (2) years’ and no more than ten (10) years’ written notice to the person to whom the grant was made. For example, if work was copyrighted on September 26, 1948, termination could be effected as early as September 26, 2004. Therefore, the earliest possible date to serve a “Notice of Termination” would be September 26, 1994. The latest date you could serve notice of termination in this instance would be September 26, 2007. Before the stated date of termination, an author, for example, can negotiate for a better deal with his original publisher, or, upon termination make a new deal with a new publisher.
|TIP: Notice may be served anytime during the period beginning 46 years after the original copyright date and running through 59 years after the original copyright date.
What a Family Should Do if an Author Dies During the Initial 28-Year Term
If you are the heir of an author who died during the first 28-year term of copyright, you may have a hidden interest in his or her pre-1978 copyrights. Even if that author assigned or willed his or her copyrights to a third party, the author’s heirs, not that unrelated third party (e.g., mistress or publisher), would own the renewal term. That is because when an author dies before the end of the 28th year of copyright, the 67 years of renewal copyright vests automatically in the author’s statutorily designated heirs. For example, following the initial term of their deceased father’s play, The Cave Dwellers, the children of Pulitzer Prize-winning playwright, William Saroyan renewed the play’s copyright in their name. Asserting Saroyan’s children were estranged from their father, the William Saroyan Foundation, to whom Saroyan left his copyrights, attacked the children’s renewal claim. The court, however, concluded that Saroyan’s bequest of renewal rights in the play to the Foundation was invalid. Why? To the surprise of many — including some family law and estate planners — federal copyright law trumps a decedent’s will. In this instance, notwithstanding his wishes to the contrary, since Saroyan died before the renewal term vested, his copyrights remained with his family.
To take advantage of this interesting wrinkle in copyright law the work must have been published before January 1, 1978. You should “claim” your right in the renewal term by sending the publisher written notice that you acquired the renewal rights in the copyright. If you fail to send notice, the publisher, or other licensee or assignee, will continue to collect monies. If a writer, or writer’s family, is uncertain whether he or she assigned their renewal interest, contact an attorney familiar with these matters to review the contracts.
|TIP: There are two circumstances under which one can “bump” a will or contract. First, if the copyright contract does not expressly grant or assign the renewal rights to the publisher or record company. Second, even if the contract or will grants a third party renewal rights, that grant will be disregarded if the author dies during the first 28-year copyright term.
How Heirs Can Stop Film and TV Adaptations of Terminated Works
The policy of permitting an author’s heirs to recapture rights if the author dies before the renewal term, also allows an author’s heirs to stop exploitation of motion picture and television programs (and other derivative works) based on the terminated work. That is, after transfer of rights in the underlying work is terminated, the owner of the derivative work (e.g., motion picture version of a novel) has no right to continue exploiting the work in any manner.
Even if a motion picture company obtained the right to produce a film based on a novel, and that agreement was for the “for the full term of copyright, and any renewals and extensions thereto,” the author’s heirs are not bound to that agreement if the author does not survive to the renewal term. If the motion picture company does not obtain a license to distribute the film from the author’s heirs, continued distribution of that film during the renewal term would infringe the novel’s copyright. Of course, this powerful right to stop Hollywood from distributing film adaptations only works if the author does not survive to the renewal term. Like the rules governing termination after 56 and 75 years, the rules governing recapture of renewal terms are very complicated.
Advice for Publishers
If a publisher would like protection against the eventuality of a copyright owner’s death before the renewal period, certain steps can be taken for protection. For example, if the author is very old, or ill, publishers should file a copyright renewal on the author’s behalf at the beginning of the 28th year after publication. Publishers can also attempt to obtain assignments of renewal rights from the author’s spouse, children and even grandchildren — although, this approach is not foolproof. Keep in mind, time is your biggest enemy. Therefore, you must act promptly. Of course, if you are an author, and are very ill, it would make sense not to renew you copyright. In the event of your death, provided you or your publisher didn’t file for renewal, your heirs would be able to recapture your copyrights during the renewal term. Important! If heirs do not file a copyright renewal application, they forfeit the right to stop exploitation of derivative works during the renewal period.
Keep in mind that the days of contact and will bumping are limited. After 2005, there will be no more copyright renewals, at which time, the dead can rest soundly knowing that their wishes (and wills) will be carried out.
Terminating Post-1977 Author Grants & Assignments
While beyond the scope of this article, post-1977 grants are subject to similar, but not identical, termination rules as pre-1977 works. Post-1977 grants, such as a songwriter agreement with a music publisher, may be terminated during a five year period beginning 35 years after the grant was made. To exercise the 35-year right of termination, authors must give written notice not less than two or more than ten years from the intended termination date. That means, if the original copyright date is January 1, 1978, a notice of termination can be served as early as January 2003. For 1979 works, notice of termination can be served as early as 2004, and so on. Put another way, for post-January 1, 1978 works, the earliest date of notice is 25 years after the grant was signed.
Unlike the recapture rules for pre-1978 copyrights, which provides for termination of rights granted by either the author or his or her heirs, the 35- year rule only applies to grants made by the author after January 1, 1978. What this means is that the author’s surviving spouse or children may terminate assignments executed after January 1, 1978, provided, the assignment was made by the now dead author.
The issue of who owns and controls copyright rights after an author dies is a complicated matter. If you are the spouse, child, grandchild or next of kin a deceased author, you may have inherited the right to recapture that individual’s valuable copyrights. Bear in mind, artistic and literary property are governed by very complex rules. Therefore, if you think you are eligible to recapture your spouse’s copyrights, or terminate your father’s publishing contract, you are advised to contact a copyright attorney who is knowledgeable in this area.
Note: This article assumes, without taking a position on the matter, that the US Supreme Court will uphold the constitutionality of the copyright term extension enacted by Congress.