Termination of Transfers; Infringement I

Intro to IP – Prof Merges

2.19.09

RENEWAL

• 1909 Act

• Had to be made to the Copyright Office in the last year of the first term of copyright for works published with copyright notice up to the end of 1963.

AUTOMATIC RENEWAL

• For works published prior to Jan. 1, 1964, the author had to file a renewal registration in CO in 28th year or work fell into public domain

• 1992 the 1976 Act amended to provide for option of automatic renewals for works published between 1964 and 1977

• What is the benefit of voluntary renewal? – 304(a)(2)(B)

RULES ON VESTING FAVOR VOLUNTARY RENEWAL

• Under automatic renewal provisions (Copyright Renewal Act of 1992), renewal vests on either of 2 dates - when registration filed or if no registration filed, at beginning of renewal term – 304(a)(2)(B).

• Longer term if you voluntarily renew

Renewal and Transfer/Grants

• 1909 Act:

• 2 term structure (28 years initial term + 28 year renewal term)

• Author could transfer renewal term before its start but had to live until sometime in the 28th year for that transfer to be valid

• Otherwise renewal rights would go to the statutory beneficiaries

• Widow or widower, children, executor or next of kin (1909 Act

§ 24)

Two Different Termination Rights

• Works in their second renewal term as of Jan 1, 1978: section 304(c)

– Capture 39 years of extended renewal term

• Transfers made after 1977: Section 203

Stewart v. Abend

• Page 472, note 1

• Termination Right

Cornell Woolrich – “It Had to be Murder” (1942)

Rear Window (1954)

Jimmie Stewart

Terminations of Transfers

• What is a transfer of copyright?

• A “grant” of a transfer of an interest in copyright includes any sale or assignment of all or any part of the copyright, any exclusive or non-exclusive license, and/or any mortgage or hypothecation (such as using the copyright as collateral for a loan) (§ 101)

Termination provision

• 17 USC 203(a)(3)

• Rationale?

Termination of Transfer

1942: Woolrich writes “It Had to Be Murder”

1945: Woolrich assigns movie rights to Hitchcock and Stewart

1954: “Rear Window” produced

Termination of Transfer

1942: Woolrich writes “It Had to Be Murder”

1945: Woolrich assigns movie rights to Hitchcock and Stewart

1954: “Rear Window” produced

1969: Chase Manhattan renews the copyright and (in 1971) assigns it to Abend

1942: Woolrich writes “It Had to Be Murder”

1945: Woolrich assigns movie rights to Hitchcock and Stewart

1954: “Rear Window” produced

1968: Woolrich dies

1969: Chase Manhattan renews the copyright and (in 1971) assigns it to Abend

1983: “Rear Window” re-released; Abend sues

Infringing!

W. dies before renewal vests; renewal vests in successor (Chase)

Authorized!

Woolrich assigns initial term and contingent interest in renewal

STEWART v. ABEND (1990)

• Supreme Court holds that proprietors of derivative works are limited in exploitation they can make of those works following reversion in renewal term of underlying work on which derivative work is based.

Amendment to 304(a) as a result of Stewart v. Abend

• See 304(a)(4)(A)

Arnstein v. Porter

• Cole Porter

• Standard for proving infringement

Procedural History

• District court granted defendant Porter’s Summary Judgment motion

• Can you guess why?

Standard for Infringement

• Copying

• Improper Appropriation

Element 1: Copying: P. 477

• Proof of “access” or other circumstantial evidence of copying

• “Striking similarity”

– “must be so striking as to preclude the possibility [of independent creation]”

Element 1: Copying

• Issue of fact

• Evidence here?

Copying facts here

• “Fantastic” evidence

• More objective evidence

– Wide distribution of copyrighted work

Improper appropriation

• “substantial similarity” – versus “probative” similarity” (n. 1, p. 480)

• Effect on the “lay listener”, the ordinary audience member, is what counts

• But: expert witness testimony is admissible too

Judge Clark dissent

• Music is intellectual too; three- four- and five-note sequences are repeated in both compositions

• But this is not enough

• Arnstein v. Edward Marks, 12 note sequence infringed

Second v. 7th Circuit on Access

• 2nd: No evidence of access if there is enough similarity

• 7th: Must show some evidence of access to support infringement case

• Posner reconciliation - ? P. 481