February 16, 2021 – Most people are familiar with the buying and selling of goods. I own something, I sell it to you for good and valuable consideration, and now you own it. Simple enough, right? Not necessarily. Particularly if what I sold you was a license to use my copyrighted material. In Copyright law, authors have what is known as a “termination right,” which allows them to “pull back” rights they had previously granted to another. As one might imagine, this has caused some controversy, particularly in the entertainment industry. Before diving into a couple recent examples, first a primer on what, exactly, Copyright is, and what it is not.
Copyright is not the same as a trademark. A trademark is ownership rights in a word or phrase used in commerce to identify its user’s goodwill and reputation. Copyright, on the other hand, is the subject matter defined as “an original work of authorship, fixed in a tangible medium.[1]” Patent and Copyright law both originate in the Constitution[2], with the “Progress of Science” and “right to their respective Writings” establishing the right to Copyright, and “Useful arts” and “inventions” establishing the right to Patent. Copyright law is codified in Title 17 of the United States Code. There are 8 categories of copyright protection: literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic, and sculptural works; motion pictures; sound recordings; and architectural works.[3] Authorship can either be a sole or joint effort. If joint, each author has an indivisible right to the whole, even if each contribution was wholly independent, so long as the authors knew at the time of authorship they were creating for a collaborative reason.
There are two other concepts in copyright which are important to the idea of termination rights – “works for hire,” and “derivative works.” A work for hire is defined in defines two instances. First, a work can be prepared by an employee in the scope of his or her employment. This is seemingly straightforward enough, but it doesn’t apply to contractors in the ordinary course. Therefore, the second instance is “a work ordered or commissioned for use as a contribution to a collective work.” The idea of a collective work is at the crux of the right to termination.
Derivative works, on the other hand are a work based upon a preexisting work. A copyright owner has the sole right to distribute works protected by copyright, as well as the sole right to create derivative works. However, a copyright holder can license or assign the right to create derivative works. When a person, under license to create a derivative work, creates new creative attributes to the previously copyrighted work, that subsequent creator has an exclusive right to copyright the new material, apart from the previously copyrighted work. Generally, the licensee-creator also retains a continuing right to use the prior material which prompted the creative “derivation.” Notably, in the case of literary works, characters may be separately copyrighted from the works in which they appear if they are “sufficiently delineated,” meaning that the character is highly developed, and the copyrightable features of the character are readily identified and consistent throughout all derivative works.
So how does copyright termination work? First, copyright termination is codified in two sections of Title 17.[4] Any work which is not a work for hire, created after Jan. 1, 1978, which is transferred (i.e., sold) or exclusively or nonexclusively licensed, may have such license terminated during a five-year period beginning 35 years after the execution of the grant. Seems complicated, right? In other words, if person A licenses his work to business B on Jan. 1, 1978, A can reclaim sole right to the copyrighted material (i.e., take the license away from business B) for a period of time beginning Jan. 1, 2013 and ending Jan. 1, 2018. Before or after this time period, the author is out of luck and the licensee retains rights as provided in the license. However, a copyright holder loses the right to terminate if ownership of the copyright or license to the copyright is granted through a will or codicil.
Section 304(c) describes who owns the copyright at the author’s death, in cases where the copyright is not transferred by will. This section also describes the termination process. If a copyright was granted prior to January 1, 1978, the termination period is 56 years rather than 35. Additionally, there is a somewhat complicated section regarding termination rights and copyrights in their “renewal” period rather than original period extended by the passage of the Sonny Bono Copyright Term Extension Act,[5] which states that the five-year period begins 75 years from the date the copyright was originally secured.
So that’s copyright termination in a nutshell. Clear as mud, right? Here are three examples in three different “entertainment” industries, where copyright termination has caused some pain for both the author and the licensee:
First, in the movie industry, the termination right strikes the Friday the 13th franchise. Tim Kelly details the termination effort of Victor Miller, the author who originally created Jason Vorhees (from the Friday the 13th franchise).[6] In the original Friday the 13th movie, Jason Vorhees was merely an apparition in a dream. The hockey-mask wearing mass murderer commonly recognized as Jason did not come into being until subsequent movies. Horror, Inc., the successor-in-interest to the original film production company, The Manny Company, argues that Jason was not developed enough in the original film to warrant a termination right vested in Mr. Miller.[7] While Horror, Inc. fails on that score, the court does suggest that in the subsequent movies, the derivation of the Jason character is imbued with so many new, creative characteristics not found in the original that they are themselves worthy of separate copyright protection.[8] Therefore, while the name Jason Vorhees (and Friday the 13th) may be lost to Horror, Inc., the hockey-mask murder himself is not.
In the Music Industry, termination rights are even more complicated, and particularly when it comes to sound recordings. In the beginning of this blog, I described the categories of copyrightable content. As described by Kike Aluko,[9] the issue with sound recordings is that they are not specifically identified in Title 17.[10] While the law has flip-flopped on whether sound recordings are inherently included in these sections, the current law requires that either contract language be plain or that the sound recordings themselves must be viewed as part of a compilation. Since termination rights are indivisible and non-divestible (you can’t split the right between people and you can’t sell or otherwise give it way), clarity in contract language may still be insufficient, unless contractual language identifies that a collection of sound recordings is a “compilation.” Whether or not an album is a compilation (a term of art) is itself complicated, since viewing an album as a compilation benefits the artist as far as termination rights and the record companies as far as damages recoverable in infringement actions. These two interests therefore are apparently inherently at odds, and are argued in the alternative depending on the litigant’s goals.
Finally, no discussion of Copyright law would be complete without consideration of America’s pastime: Baseball. Copyright termination rights have even permeated Major League Baseball. Specifically, currently at issue is my hometown baseball team, the Philadelphia Phillies, and the creators of its mascot, the Phillie Phanatic. Bonnie Erickson, who also created Miss Piggy and Statler & Waldorf, in partnership with Wayde Harrison, created the Phillie Phanatic in 1977.[11]. Not only is the issue of termination in contention, but also the issue of derivative works and the rights of licensees (in this case, The Philadelphia Phillies) in copyrights of those derivative works. This case is still ongoing, although the Phillies have debuted and continue to utilize their redesigned Phillie Phanatic (P2). Stay tuned!
In conclusion, I hope I have demonstrated that even an area as seemingly simple as copyright (envision a thing, create the thing in a tangible way, register with the Copyright office) can often times be complex. Intellectual Property can be incredibly valuable, and it is important that you define the “metes and bounds” of what you own, how you use it, and how you share it with others. If you have a copyrightable creation, or a brand, or an innovation, the money invested in hiring an IP attorney to look after your interests will pay dividends in the long run.
[1] 17 U.S.C. §102(a)
[2] U.S. Const. Art. I § 8
[3] 17 U.S.C. §102(a)
[4] 17 U.S.C. §§ 203 and 304
[5] The Sonny Bono Copyright Term Extension Act revisions to Title 17 can be found here: https://www.congress.gov/bill/105th-congress/senate-bill/505
[6] Tim Kelly, Jason’s Long Night at Camp Blood: Surveying the Independent Copyrightability of Jason Voorhees in the Wake of Horror Inc. v. Miller, 10 Cybaris INTELL. PROP. L. REV. 41 (2019).
[7] Id.
[8] Id.
[9] Kike Aluko, Terminating the Struggle over Termination Rights, 10 HARV. J. Sports & ENT. L. 119 (2019).
[10] 17 U.S.C. §§ 203 or 304