Termination of Transfer Part 2: Clearing the Flaming Hoops

{3:30 minutes to read} Terminating a transfer of copyright is far more technically complicated than one might expect.

As discussed in my last post, the termination of transfer provisions in the current Copyright Act of 1976 are embodied in sections 203 and 304:

• Section 203 addresses works that were created or transferred on or after January 1, 1978;
• Section 304 addresses works that were assigned or licensed before January 1, 1978 (the day the 1976 Act went into effect).

The 2 provisions are very similar but differ in a few details.

Both sections permit the author or certain of the author’s heirs to terminate a “transfer” — that is, any assignment or license by the author of the copyright. Terminated transfers result in the “recapture” of the transferred copyright by the author or certain of his heirs. However:

• Under section 203, post-1978 transfers can be terminated only during a single 5-year window.
• Under section 304, pre-1978 transfers can be terminated in either of two 5-year windows.

What kinds of works?

The Act allows the author or his heirs to terminate any work except a “work made for hire.” The “work made for hire” category is a complex one, and will be discussed in a future post. For now, suffice it to say that in certain circumstances, such as:

• where the author creates the work for an employer while a regular employee;
• where the author is specifically commissioned to create a work that fits into a narrow set of 9 categories, listed in section 101 of the Act;

an author can create a work which is not subject to termination of transfer. Otherwise, almost any type of transferred work is subject to termination.

Generally, transfers of works with more than one author are terminable, though there are additional special circumstances. For the sake of simplicity, we will limit this discussion to works with a single author.

Limitations

There are 2 important limitations on the termination of transfers.

1. They are only effective as to U.S. rights: an author who transferred worldwide rights can only “recapture” his or her rights in the United States; elsewhere, the transfer will stand unaffected.
2. The termination does not affect derivative works created under the authority of the transfer.

For example, if the author wrote a novel and licensed it to a film studio, which made a film based on the novel, the author can terminate the license and “recapture” his or her rights. However, the film studio can continue to exploit its derivative film without regard to the termination, though it may not make new films derived from the novel.

In my next article, I will continue discussing who can terminate a transfer of rights and when the termination rights can be exercised.

Joshua Graubart
646-781-9321
jggraubart@graubartlaw.com
www.graubartlaw.com

 

 

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¹ See 17 U.S.C. 101 (definition of “work made for hire”).