Claire Corlett

Fish Food, Fish Tanks, and More
William Fisher, CopyrightX: Lecture 6.3, The Mechanics of Copyright: Protective Provisions

William Fisher, CopyrightX: Lecture 6.3, The Mechanics of Copyright: Protective Provisions


In the 1940s, in the case of
Fred Fisher versus Witmark, US courts confronted for
the first time the question of whether an author may
assign his so-called expectancy interest in the renewal
term for his copyright. Here’s the context in
which that question arose. You’ll recall, I hope,
that the 1909 copyright system worked like this– so
long as he complied with the rest requisite formalities,
the author of a work received a 28 year initial term
of federal copyright protection. During the 28th year, he could
apply for a second 28 year term. If he had died, his widow or
children could apply, and so forth. As I’ve indicated, the
renewal term was said to be a new estate, not just a
continuation of the earlier term. It was common during
this period, like today, for authors to assign their copyrights. This was especially common
in the music industry. As we saw in the third lecture in
this series, composers very commonly assigned the copyrights in their
compositions to music publishers. The effect of such an assignment was
that the assignee– the publisher– acquired the initial 28 year term. If the composer was still
alive at the end of the term, he would often renew
the copyright, and then assign the renewal term to
a publisher, often but not always the same publisher. If he died, his widow could do so. From the publisher’s
standpoint, this was not ideal. The publisher couldn’t be sure
of getting the second term. And in any event, during
the 28th year, the publisher would have to negotiate with the
composer, or his widow, or executor, concerning the terms
of the new assignment. If the song in question
had proven popular, the publisher might be obliged to pay
considerably more to get the renewal term than it had paid
to get the initial term. So publishers, and analogous
assignees in other industries, frequently asked authors
during the first negotiation to assign to them not only the first
copyright term, but also the author’s contingent rights to the renewal
term, known as an expectancy interest. The reason for this
terminology– the reason that they were called contingent–
is that the author only had a right to renew if he was
still alive in the 28th year. If he had died by then, his widow
or executor had the right to renew, and the author lacked the power to
assign his widow’s contingent rights. The net effect is that the assignee
obtained the first term for sure, and the renewal term if and only if the
author survived until the 28th year. For obvious reasons that too is
not ideal from the standpoint of the assignee, because it meant
that sometimes the assignee would have to renegotiate with
a widow or executor. But it was a lot better than
always having to renegotiate. Let’s pause for a technical point. How exactly was this assignment of
the expectancy interest achieved? The answer is usually
by the author conveying to the assignee an irrevocable
power of attorney– in other words, legal authority to do what otherwise
the author himself had the right to do, namely, to file
the renewal application, and to get the resultant renewal term. This prevented the author from
changing his mind in the 28th year, and filing for renewal himself and
refusing to transfer the renewal term. As I say, these
arrangements were common, but it wasn’t obvious
that they were valid. In other words, it wasn’t obvious
that the purported assignment of the expectancy
interests were enforceable. The 1909 statute did not
address the issue explicitly. But the House and Senate reports
explaining the basis of that statute contained a passage that
seemed to cast doubt on the validity of these assignments. Here it is. The crucial language is highlighted. “It not infrequently happens that the
author sells his copyright outright to a publisher for a
comparatively small sum. If the work proves to be a great
success and lives beyond the term of 28 years, your committee–” meaning
your congressional committee– “felt that it should be the exclusive right
of the author to take the renewal term, and the law should be framed
as is the existing law, so that he could not be
deprived of that right.” This passage suggests that the purpose
of not giving an author from the outset a single term of life plus 50 years,
or something shorter, like 56 years, but instead requiring him to renew
the copyright in the 38th year, was precisely to give him an
opportunity to renegotiate the terms of any assignment. And the reason why that’s important
is that, as the committee explains, authors tend to be either
vulnerable or naive, and therefore, to assign their
initial terms for too little money. In other words, the law was
designed to protect authors from their own foolishness
or vulnerability. Permitting them to assign
their expectancy interests, along with the first term,
arguably would defeat that goal. The upshot is that there
was a plausible argument that these assignments of
expectancy interests were invalid. But for many years, they were used
without being challenged in court. Finally, one composer did so. His name was George Graff. In 1912, Mr. Graff helped compose the
song, “When Irish Eyes are Smiling.” Here’s a brief excerpt of a
1913 recording of the song. [MUSIC PLAYING “WHEN IRISH EYES ARE
SMILING”] (SINGING) There’s a tear in your eye. And I’m wondering why, for it
never should be there at all. With such power in your smile,
sure a stone you’d beguile, and there’s never a
teardrop should fall. When your sweet lilting laughter
like some fairy song, and your eyes sparkling bright as can be you
should laugh all the while, and all other times smile. And now smile a while for me. When he first wrote this song,
Graff assigned the copyright, in the initial 28 year term, to a
music publisher, Witmark and Sons, in return for some royalties. Five years later, he encountered
financial difficulties. To raise some cash, Graff
gave up his royalties for “Irish Eyes,” and
for 68 other songs, and in addition, assigned his expectancy
interest in the renewal term for all of those 69 songs to Witmark, in return
for a lump sum payment of $1,600. Subsequently, “Irish
Eyes” became very popular, and earned Witmark lots of
royalties, none of which, of course, went to Graff. In 1939, on the first day of
the 28th year of the copyright, Witmark, the publisher,
exercised its right to renew the copyright for
an additional 28 year term. Graff, unhappy, insisted that his
1917 assignment of the expectancy interest to Witmark had
been invalid, and purported to renew the copyright
in “Irish Eyes” himself, and then assign it for more money to a
different publisher, Fred Fisher Music. The two publishers then fought it out. Although, as you can see, the case that
grew out of this complicated narrative involved two publishers,
it had big implications for all other composers and
artists in analogous positions. If Witmark prevailed, then
many authors would not get a second bite at the apple. They could, and would, assign
their expectancy interests, along with the first term of
their copyrights, sometimes for very little money. Then, when the time for renewal
arose, they would have no rights. By contrast, if Fred Fisher Music
prevailed, authors in the future would be unable to assign their
expectancies, but on the other hand, would be in a much better
bargaining position at renewal time. So the stakes were high. The case proceeded through
three levels of courts. The trial judge ruled
in favor of Witmark. The Court of Appeals affirmed,
by a vote of two judges to one, and the Supreme Court affirmed,
by a vote of five to three, one justice not participating. The law was thus settled. Expectancy interests of this
sort are indeed assignable. For our purposes, even more
important than this outcome is the language used by the opposing
groups of parties and judges. Two radically different conceptions
of authors, their characteristics, and their needs figured in this case. The first was well expressed
by Judge Jerome Frank, who dissented in the Court of Appeals. “In considering those facts,
we should take judicial notice of the economic capacities and
business acumen of most authors. We need only take judicial notice of
that which every schoolboy knows– that, usually, with a
few notable exceptions, such as Shakespeare and
George Bernard Shaw, authors are hopelessly inept in business
transactions and that lyricists, like the defendant Graff, often
sell their songs ‘for a song.’ ” Appreciation of these
facts, Frank contended, should prompt us to treat
lyricists, and authors in general, as especially vulnerable, perhaps even
a quote “necessitus class,” close quote, and to curtail their contractual
freedom for their own good. Specifically, we should disable
them from assigning their expectancy interests, which Frank argued the
statute, properly construed did. The opposing narrative and
vision was equally well stated by Justice Felix
Frankfurter, who wrote the majority opinion for the Supreme Court. “It is not for courts to judge
whether the interests of authors clearly lie upon one side of this
question rather than the other. We cannot draw a principle of law from
the familiar stories of garret-poverty of some men of literary genius. Even if we could do so, we cannot say
that such men would regard with favor a rule of law preventing them from
realizing on their assets when they are most in need of funds. Nor can we be unmindful of the
fact that authors have themselves devised means of
safeguarding their interests. We do not have such assured knowledge
about authorship, and particularly about song writing, or the psychology
of gifted writers and composers, as to justify us as judges in importing
into Congressional legislation a denial to authors of
the freedom to dispose of their property possessed by others. While authors may have habits making
for intermittent want–” in other words, they don’t manage their
money well– “they may have no less a spirit
of independence which would resent treatment of them as
wards under guardianship of the law.” Frankfurter’s vision, his
insistence that authors were responsible adults,
autonomous individuals, and should not be treated
as wards of the state, prevailed in this particular case. But Judge Frank’s competing
vision, that the law should be crafted to nurture and protect
improvident authors, to shield them from their habitual folly, also
had a significant following. Three of the Supreme
Court justices dissented. Instead of writing a dissent
themselves, they merely indicated that they agreed with
the analysis of the language and history of the copyright law in
the dissenting opinion of Judge Frank, in the court below. These competing visions are outgrowths
of deeper and broader themes in copyright law, and
in US law in general. Indeed, both of these
opposed visions can be found in the legal systems
of most countries, at least in Europe and North America. The broader theme that underlies
the Frankfurter argument is sometimes called individualism. Here’s how Duncan
Kennedy, the scholar who has done the most to identify and
explore these ideological currents, describes it. “The essence of
individualism,” says Kennedy, “is the making of a sharp
distinction between one’s interests and those of others,
combined with the belief that a preference in conduct for
one’s own interests is legitimate, but that one should be willing
to respect the rules that make it possible to coexist with
others similarly self-interested. The form of conduct associated with
individualism is self-reliance. This means an insistence on defining
and achieving objectives without help from others– i.e., without
being dependent on them or asking sacrifices of them. It means accepting that they
will neither share their gains nor one’s own losses. And it means a firm
conviction that I am entitled to enjoy the benefits of my
efforts without an obligation to share or sacrifice them
to the interests of others.” An attitude strongly
associated with this outlook is a hostility to
paternalism, legal rules that restrict people’s freedom
for their own good, such as a rule preventing authors
from assigning their expectancy interest on the grounds that they
will be better off if they’re forced to wait until the end of
their initial copyright terms. Opposed to individualism is altruism. Here’s how Kennedy described it. “The essence of altruism
is the belief that one ought not to indulge a sharp
preference for one’s own interests over those of others. It has roots in culture, in
religion, ethics and art, that are as deep as
those of individualism. The simplest of the practices
that represent altruism are sharing and sacrifice. Sharing is a static concept, suggesting
an existing distribution of goods which the sharers rearrange. It means giving up to another gains or
wealth that one has produced oneself or have come to one
through some good fortune. Sacrifice is the
dynamic notion of taking action that will change an
ongoing course of events, at some expense to oneself, to minimize
another’s loss or maximize his gain.” This orientation tends to sustain
a much more favorable posture toward paternalism. People, viewed this way, should
not be left to their own devices. The law should, at least sometimes,
intervene to save them from themselves. Kennedy’s great essay, from
which these passages are drawn, explores in depth the relationship
between these competing attitudes concerning the substance
of human relations, and analogously competing attitudes
toward the proper form of legal rules. If you’re curious, I strongly
encourage you to explore that essay. It’s available online at the URL
listed on the preceding slide. But our concern here is
with the narrower question of how the attitudes
I’ve just summarized find expression in copyright law. Legislators, when adjusting the
copyright statute, and judges, when construing and
applying the statute, are frequently pulled in different
directions by these warring impulses. Sometimes, as in the Witmark case,
the individualist impulse prevails. But sometimes the
protective impulse prevails. One manifestation of
the protective impulse was left intact by the
controversial decision in Witmark. As we’ve seen, if an author had died
by the time the renewal window opened, his widow or children could
renew and keep the copyright. They could do so, even if the author
had assigned his contingent expectancy interest. The reason, to repeat, is that
all the author had, and thus all he could assign, was the
right to renew the copyright if he was alive at the start of 28th year. If he didn’t make it, he had nothing,
and thus his assignee acquired nothing. The purpose and effect
of this rule, of course, was to shield authors’ widows, widowers,
and children, from foolish assignments, by giving them separate rights. Now those rights were far from perfect. Most importantly, they only have value
if the author died less than 28 years after publication. But they were better than nothing,
and sometimes quite valuable. Another very important
manifestation of what I’m calling it the protective
impulse in US copyright law is the set of so-called
termination rights. These were first introduced
in the comprehensive 1976 reform of the copyright
statute, and subsequently modified by the 1998
Copyright Term Extension Act. I mentioned these termination rights
at the end of the preceding lecture. I now want to outline
them in a bit more detail. Here’s how they work. There are two groups of these rights. The first apply to works
created in 1978 or later. You’ll recall, I hope, that
federal copyrights in such works arise when they are first
fixed in a tangible medium, and last for the life of
the author plus 70 years. The authors of such works,
of course, initially acquire those copyrights, but frequently
assign them, or portions of them, to other parties. For example, as we’ve
seen, musicians commonly assign the copyrights in their sound
recordings to record companies. These are known as
inter vivos transfers, because they occur during
the author’s lifetime. Typically, such
assignments are permanent. In other words, the assignee
gets the full copyright term. And notice, this effect is a bit odd. The assignee’s rights
last for a period of time tied to the lifespan of the author. The longer the author lives, the more
valuable are the assignee’s rights. For those of you familiar with the
language of common law real property law, the effect is analogous to a life
estate pur autre vie, plus 70 years. Curious, but that’s how it works. Suppose that a particular author
assigns her rights for a pittance, and then later comes
to regret her decision. Can she ever get the copyright back? The answer is yes. Section 203 of the statute
gives her the right to terminate the assignment
during a five year window that opens 35 years after the date
of the original assignment. If she wishes to
exercise that right, she must notify the assignee
between two and five years before the termination itself. If she has died, her
spouse or descendants get the right to terminate,
and to recover the copyright. A crucial difference between this
system and the renewal system we examined a minute ago is that the
termination rights are non-waivable. In other words, the author may not,
when she assigns her copyright, agree to waive her rights later
to terminate the assignment. If she purports to do so, that
waiver will not be enforced. In other words, Congress,
when it created this system, adopted Judge Frank’s view of the
legitimacy and importance of protecting authors from their own
ill-advised decisions, rather than Justice Frankfurter’s
hostility to making authors wards of the state. Who enjoys the copyrights after the
original assignments are terminated? The person or persons who, according
to the list in the upper right hand corner of this slide, are
entitled to terminate on the date the notice to terminate is given. What about older works, specifically
those published between 1964 and 1977? Copyrights in these, you’ll
recall, function very differently. Federal copyright protection attached
to them only upon publication, with appropriate notice, and
now lasts for an initial term of 28 years, and an automatic
renewal term of 67 years, for a total of 95 years from
the date of publication. Suppose that, sometime after
1978, the author, having renewed assigns the remainder
of the renewal term. The assignee will keep it
for the balance of the term, unless the author can
terminate the assignment. Again, Section 203 the
statute gives her the right to do so during a five
year window that opens 35 years after the date of
the original assignment. These rights work the same way
as the set we just considered. If the assignment was made before 1978,
a different set of termination rules apply. Section 304 of the statute gives
the author– or if she has died, the members of her family– the
right to terminate at any time during a five year window
that opens 56 years after the date of the
original publication. In other words, when federal
copyright protection started. Mechanically, these termination
rights work essentially the same way as the set we just considered, and
can be exercised by the same parties. They, too, cannot be waived. If the author or her family
members miss that window, another one opens 75 years
after the original publication. Finally, what about works first
published between 1923 and 1963? As we’ve seen, the subset of
these works that were properly renewed during the 28th year of the
original term are still alive today. If they were assigned by
the author to someone else, may the author or her family
terminate those assignments? Again, the answer is yes. If the assignment was made in 1978 or
later, the Section 203 rules apply. If the assignment was made before
1978, the double windows of Section 304 apply. As I trust you can see, these rules
are Byzantine in their complexity. And their intricacy often defeats
authors or their families, who lack the money or
knowledge to hire lawyers who can guide them through these reefs. But at least well advised
authors or their families can use these procedures to
recover the copyrights they once purported to alienate permanently. In this way, the law attempts to protect
them from their own lack of foresight. These termination rights represent
perhaps the clearest expression in copyright law of the vision
expressed by Judge Frank. A final manifestation of
that vision we discussed at the end of the previous lecture. Here’s a reminder. You’ll recall, I hope
that the law limits the set of types of works that
can become works for hire, through signed written contracts. Sound recordings don’t
appear on this list. They were briefly added,
and then withdrawn. That means that record
companies may be prevented, for the reasons we discussed
last week, from treating the sets of sound
recordings they commission from recording artists
as works for hire. To be sure, the record
companies can, and typically do, obtain from recording artists
assignments of their copyrights, but they may not be able to enforce
the provisions of the typical recording contracts that purport, in addition,
to render those sound recordings works for hire. The reason why this highly
technical difference is so important should by now be clear. Works for hire are not subject
to the termination rules. So if the recordings are works
for hire, the recording artists and their families will never
get the copyrights back. Springsteen and Clapton will have to
make do with their current revenue streams. If they are not works for hire,
but are merely assigned copyrights, then the artists and their families
can begin terminating them, 35 years after those assignments
were initially executed. Suppose that a particular
assignment was made immediately after this set of rules became
effective, namely on January 1, 1978. When can the assignments be terminated? Right now, in 2013. Thus, the courts will soon
be obliged to determine the status of these recordings. The general point
lurking in these details is that this legal doctrine arguably
represents yet another manifestation of the protective impulse
exemplified by Judge Frank’s opinion. One possible explanation
for the fact that this list of potential works for hire
is exclusive, and does not contain sound recordings,
is that Congress wished to prevent recording artists
from entering into deals by which they permanently surrender their
rights for too little money. In other words, Congress wanted to
ensure that they, or their families, get a second bite at the apple, and
so deprived them of the legal power to give up the chance in the
future to take that bite. To summarize, I have discussed today
three dimensions of the copyright system in the United States. First, the vestigial but important
role played by formalities, and the associated
policy debates concerning whether formalities
should be reinstated. Second, the intricate rules
governing the duration of copyrights. And third, the equally
intricate rules that attempt to shield artists and
their families from exploitation. These three features
surely do not exhaust the set of important aspects
of the copyright machine. Other gears and levers
are identified in the map. They include the rules that
determine how one makes an effective assignment, or license of a
copyright, or one of its component exclusive rights, and the effect
of such licenses and assignments. The rules governing the relative
rights of the contributors to a collective work, such as the
authors of freelance articles published in a newspaper, and the owner of
the copyright in the collective work itself. The recording system that plays
a limited role in resolving disputes that arise when
a copyright owner make successive and consistent
transfers of his or her rights. The messy issues generated
when the United States sought to restore the copyrights of
some non-residents, and so forth. You’re welcome, of course, to
explore the relevant branches of the map on your own. In addition, some of
these issues will be discussed in the classes and discussions
that will follow this lecture. But the three themes
we have examined today should suffice to give you at least
a general sense of how the copyright system works in practice,
and the broad policy issues implicated by that machinery. Thank you.

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