Copyright Law/Duration and Renewal

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Copyright Law Treatise
Table of Contents
Copyright Law Outline
History and Background
The Copyright Statutes
Copyright as an Element of Intellectual Property Law
Copyright Office and Judicial Review
The Subject Matter of Copyright
General Principles
The Distinction Between Idea and Expression
Compilations and Derivative Works
Pictorial, Graphic, and Sculptural Works
Pictorial and Literary Characters
Government Works
Duration and Renewal
The Renewal Format
Duration of Copyright Under the 1976 Act
Ownership of Copyright
Initial Ownership of Copyright
Transfer of Copyright Ownership
Termination of Transfers
Copyright Formalities
Formalities Under the 1909 Copyright Act
Copyright Notice Under the 1976 Act
Deposit and Registration
Exclusive Rights of the Copyright Owner
The Right of Reproduction
Reproduction of Music and Sound Recordings
The Right to Prepare Derivative Works
The Right of Public Distribution
The Right of Public Performance
The Right of Public Display
Visual Artists’ Rights
Secondary Liability: Contributory and Vicarious Infringement
Fair Use and Other Exemptions from the Exclusive Rights of the Copyright Owner
Fair Use
Exemptions and Compulsory Licenses
Enforcement of Copyright
Jurisdictional and Procedural Issues
Technological Protection Measures
State Law and Its Preemption
State Anti-Copying Laws
Federal Preemption

The Copyright Clause of the Constitution empowers Congress to grant exclusive rights to authors “for limited times.” The first United States Copyright Act, enacted in 1790, was patterned on the Statute of Anne of 1710 and gave authors a 14-year period of protection for published works and a right to renew the copyright for 14 more years if the author was alive at the end of the first term. The renewal format, with two rather short terms of protection, was a feature of U.S. copyright law through 1977. The 1909 Copyright Act granted an initial term of protection for 28 years and a renewal term of another 28 years upon timely registration by the author or by certain designated statutory successors. Under the 1909 Act, an author of an unpublished work could invoke state common-law copyright protection indefinitely until the work was “published” (a term of art to be discussed at Copyright Formalities § “Publication” (1909) and Copyright Formalities § “Publication” (1976)); for most unpublished works, the author had the option to secure federal copyright protection by registering the work with the Copyright Office. For published works, common-law copyright was preempted and protection could be secured only by compliance with the formalities of the federal act.

With the 1976 Copyright Act, effective January 1, 1978, both the starting point and ending point of federal copyright protection were changed. As already noted, copyright attaches as soon as a work is “created,” i.e., as soon as it is “fixed” in a tangible medium of expression. This is true even for works that were created before the effective date of that Act, whether those preexisting works were at the time published or unpublished. State common-law copyright for “fixed” works was from that date displaced by federal copyright.[1]

The 1976 Act also dramatically altered the period during which copyright protection lasts, most notably by abandoning the renewal format for works created (or first published) after January 1, 1978, and substituting a term of protection for such works of the author’s life plus 50 years. The renewal provisions of the 1909 Act remain important, however, if only because disputes concerning renewal rights (who owns them? were they properly secured?) that accrued in 1977 or earlier will no doubt continue to be presented in future litigation. Moreover, Congress in the 1976 Act preserved the renewal format, with some modifications to be explored immediately below, for works first published between 1950 and 1977 (during the life of the 1909 Act) so that they still have fallen within that format as they have reached the twenty-eighth year thereafter (between 1978 and 2005).

A discussion of the renewal format is followed by a discussion of the term of copyright under the 1976 Act and the Sonny Bono Copyright Term Extension Act of 1998 (named for the late popular singer and congressman).

The Renewal Format[edit | edit source]

Under section 24 of the 1909 Copyright Act, the author or a person claiming copyright (for example, by way of an assignment) was entitled to a 28-year initial term of copyright protection. Although such protection was available for most unpublished works, the typical work protected by the statute was a work that had been “published,” i.e., distributed in copies to the public, with proper notice of copyright. Copyright protection continued for 28 years from the date of publication, and could be continued for another 28-year term upon timely application by the person designated in the statute:

[T]he author of such work, if still living, or the widow, widower, or children of the author, if the author be not living, or if such author, widow, widower, or children be not living, then the author’s executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the Copyright Office and duly registered therein within one year prior to the expiration of the original term of copyright.

The renewal term, in effect, granted a statutory reversion of interest. Congress’s purpose was principally to afford to the author or the author’s family an opportunity to claim ownership and to make new transfers for a new remuneration, free and clear of any transfers of or encumbrances on the initial copyright term. An author who had conveyed copyright before or shortly after the publication of his or her work, at a time when its economic value was unknown or speculative, was given by Congress an opportunity to market the copyright a second time, when its economic value was more readily determinable. If the author were not alive in the twenty-eighth year of the initial copyright term, the right to apply for and to claim the renewal copyright fell to the next available statutory successor. If the author left a widow, widower or children, such person(s) would become the owner(s) of the copyright for the renewal term. Despite the precise statutory language, the Supreme Court held that, in a case in which the author was outlived by a widow or widower and one or more children, all of those survivors would take ownership as a class, and the surviving spouse would not take all.[2] The Court, however, did not have to determine whether the spouse takes half and the children divide the other half or whether all of the surviving family members share the copyright equally. Indeed, no lower federal court was called upon for a holding on this issue for nearly a century (after 1909), when in 2005 two different courts of appeals did decide the matter. The First and Sixth Circuit Courts of Appeals both held that the surviving spouse takes 50% of the renewal interest and the children share equally in the other 50%.[3] If the author left no widow, widower or children, then section 24 of the 1909 Act provided that the renewal copyright could be claimed by the “author’s executors.” As interpreted, this provision gave ownership of the renewal term to the executors as trustees for the persons named in the author’s will as legatees; the executor was not to hold the renewal copyright on behalf of the author’s estate, which would be subject to the claims of creditors. In default of any persons in the first three statutory categories, the author’s “next of kin” could validly claim the renewal term of copyright.

An example will demonstrate the operation of the statutory renewal provision of the 1909 Act. If an author during his lifetime licensed a publisher to print and distribute his book in paperback form, and the author died unmarried and without children prior to the twenty-eighth year from the date of publication, the renewal term could be claimed by the author’s executors holding on behalf of the persons designated in his will. The publisher’s license would be terminated at the end of 28 years, and the legatees could bargain for a new license with the same or a different publisher, for new compensation, free and clear of the earlier transfer. (As noted above, effective in 1978, 19 years were added to existing 28-year renewal terms, and another 20 years were added to those terms in 1998, for 67 total renewal years—and a possible 95 overall years of protection for such older works.)

It became common under the 1909 Act for a transferee of copyright to negotiate with an author for the ownership of both the initial and the renewal terms of copyright. Most conspicuously, in the case of popular musical compositions the popularity of which might well span beyond the initial 28-year term, the publisher wanted to ensure that it would have the right to derive income from sheet music and public performances into the renewal term. The statute made it clear that an author’s transfer of the renewal copyright during the initial term of copyright could not deprive the statutory successor—such as the widow—of her ownership of the renewal term in the event the author–husband was not alive in the twenty-eighth year. The statute did not make it quite so clear whether, in the event the author lived through the initial term, the renewal term to which the author was entitled would immediately be owned by the transferee. In other words, the statute left open the question whether an initial-term transfer of the renewal copyright would be valid and enforceable (if the author survived into the renewal term). In a controversial 1943 decision, Fred Fisher Music Co. v. M. Witmark & Sons,[4] a divided Supreme Court held—despite the obvious author-protective purpose of the renewal format—that an early assignment of the renewal term was binding and valid. But all that can be transferred is the author’s contingent interest in that term, dependent upon his survival through the initial term. If, despite such a purported transfer, the author dies before expiration of the initial term, then the assignee’s contingent interest in the renewal term is terminated and the widow or children, or subsequent statutory successors, can assert superior claims to the renewal term. Of course, under Fisher v. Witmark, there would be nothing to prevent the assignee from securing from the widow or children valid transfers of their contingent interests in the renewal term.

The four-tiered succession to the renewal term, as outlined above, applies for most copyrighted works. Section 24 of the 1909 Act, however, listed a number of exceptions, the most important of which are works made for hire and “posthumous works”; both excluded categories were left undefined by the 1909 Act. In such cases, section 24 provided that “the proprietor of such copyright shall be entitled to a renewal and extension of the copyright” for the 28-year term upon timely registration. In other words, the person who was the owner of the copyright at the end of the initial term of copyright was the valid claimant of the renewal term as well—and family members were not given the sort of priority they had in the generality of copyrighted works as described above. This allocation of ownership of the renewal term was preserved in the 1976 Act, with “work made for hire” being defined and with the House Report endorsing a narrow view of the still undefined phrase “posthumous work.”[5]

Although a feature of the U.S. Copyright Act for more than two centuries, the renewal format was almost unique in the world’s copyright jurisprudence and became subject to increasing criticism as many individuals (and even corporations) neglected, by oversight, to comply with the renewal technicalities, which required a timely filing of an application with the Copyright Office. For that reason, the 1976 Act provided that for works created or published thereafter, there would be a single term of protection measured from the death of the author. Works already in copyright under the 1909 Act were not disturbed, however, with respect to the renewal framework, and timely renewal still had to be secured in order to extend the term beyond the first 28 years. With inadvertent failures to renew continuing even after 1978, Congress decided in 1992 to provide for the automatic renewal of pre1978 works then in their first term of copyright. The law thus substituted the equivalent of a single 75-year term for the prior dual terms, by making the second term (extended by 19 years) vest without filing for renewal.[6] Then, in 1998, the Sonny Bono Copyright Term Extension Act added another 20 years, for a total of 95. This means that pre1978 works then in their first term of copyright, i.e., works first published between 1964 and 1977 (inclusive), will enjoy the full 95-year copyright term, without having to register initially and then to renew the registration during the twenty-eighth year following publication. However, Congress in 1994 coupled the new automatic-renewal arrangements with certain incentives to renew “voluntarily.” These are set forth in the rather elaborate provisions of section 304(a) of the Copyright Act. One such incentive, for example, is that with a voluntary renewal application the certificate of registration that is issued by the Copyright Office is to constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate (such as those relating to the author, date of publication, and the like).

Derivative works prepared during the initial term[edit | edit source]

A difficult and important question that arises from the renewal provisions of the 1909 Act as carried forward in the 1976 Act relates to the utilization, during the renewal term of copyright, of derivative works that had been validly prepared by others during the initial term of copyright in the underlying work. For example, the author and copyright owner of a novel might, during the initial copyright term, license another to prepare a motion picture based on that novel; the motion picture, which will typically involve substantial creative contributions by the film producer and those it employs (actors, director, cinematographer, composer), will itself be a copyrightable work. If the license expressly included the right to exhibit and distribute the derivative film during the renewal term of the novel, and if the author of the novel survived into the renewal term, the film producer could lawfully continue to utilize the film during the renewal term of the novel.

If, however, the license did not expressly cover the renewal term, or if it did but the novelist died during the initial term of copyright in the novel and another person succeeded to the renewal copyright, then the question arises whether the film can continue to be exploited by its copyright owner during the renewal term of the underlying novel. A strict application of the principles of the renewal format would suggest that once the renewal copyright in the underlying novel “springs back” to the author or to the author’s statutory successor, it does so free and clear of any licenses given during the initial term. Thus the continued exhibition or distribution of the film—which contains copyrightable elements from the novel—would constitute an infringement of copyright in the novel. Under this approach, not only would the novelist during the renewal term be able undeniably to license some other motion picture producer to base a new film on the novel, but he would also be entitled to renegotiate with the copyright owner of the first film for the right to continue its exploitation. This would, of course, deprive the producer or copyright owner of the first film of the fruits of its own copyrightable contributions, which may as a practical matter account far more for the film’s success than do its borrowed elements from the novel.

An arguably more equitable view would be that the creative and copyrighted derivative work, the motion picture film produced pursuant to a license from the novelist, should be treated as “taking on a life of its own” such that it can continue to be exhibited and distributed even after the beginning of the renewal term of copyright in the underlying novel. The film producer could not, however, produce a new film based on the underlying novel without the consent of the owner of the renewal copyright in the latter work.

The courts of appeals were unable to make a clear and consistent choice between these two theories.[7] The Supreme Court ultimately resolved the uncertainties when, in 1990, it decided Stewart v. Abend.[8] There, the Court held that the continued exhibition and distribution of the well-known Hitchcock film Rear Window, as well as the marketing of videocassettes of the film, constituted an infringement of the renewal copyright in the short story on which the film was based. The Court relied on the terms and legislative histories of the 1909 and 1976 Copyright Acts, and its own precedents, in holding that an author seeking to convey a license to create a derivative motion picture can transfer only the contingent interest that he has in the renewal term; if the author dies before the end of the initial term of the underlying story (as occurred in Stewart), the interest of his statutory successor to the renewal term cannot be diluted by the continued unauthorized exploitation of the derivative work.

In 1992, in addition to providing for the future automatic renewal of works originally published beginning in 1964, Congress allowed for “voluntary” renewals, and provided incentives to apply for the latter. One such incentive is that a person who voluntarily renews gets the benefits of the rule in Stewart that cuts off continued exploitation by others of derivative works they may have created during the initial term of an underlying work, while in the case of an automatic renewal section 304(a)(4)(A) now provides that “a derivative work prepared under authority of a grant of a transfer or license of the copyright that is made before the expiration of the original term of copyright may continue to be used under the terms of the grant during the renewed and extended term of copyright without infringing the copyright.”

Duration of Copyright Under the 1976 Act[edit | edit source]

The duration of copyright protection under the 1909 Act, which was in effect through the end of 1977, was as noted 28 years from the date of publication, with the possibility of renewal for an additional 28 years upon application to the Copyright Office in the twenty-eighth year of the initial term. This term of protection was significantly modified by the 1976 Act and again by the 1998 “Sonny Bono Copyright Term Extension Act” (CTEA). Under the current law, the term of copyright protection depends principally upon what the copyright status of the work was on the effective date of the 1976 Act, January 1, 1978. Five situations are possible:

  1. If on that date a work was already in the public domain under the 1909 Act or earlier laws, the work remains in the public domain and no copyright protection is available.[9]
  2. If on January 1, 1978, a work was in its initial 28-year copyright term under the 1909 Act, the copyright expires at the end of that term, unless the copyright is renewed by timely application. (Renewal was made automatic for works published between 1964 and 1977.) If it is renewed, the renewal term will last not for 28 years but rather for 67 years (with 19 years having been added by the 1976 Act and another 20 years by the CTEA). Section 304(a) so provides, for what is thus effectively a 95-year term of copyright. Although Congress was interested in extending the period of statutory copyright protection and discarding the renewal format, it nevertheless chose to retain that format for works then under federal copyright in order to avoid the undue disruption of expectations and transactions.
  3. Under section 304(b) of the 1976 Act, works in their renewal term of copyright as of January 1, 1978, are to be automatically accorded an extended term of protection lasting for a total of 95 years from the date copyright was originally secured. In effect, the renewal term of such works is extended from 28 years to 67 years. Because Congress, as early as 1962, anticipated major imminent changes in the copyright law and particularly an extension of the period of copyright protection, it granted what are known as “interim extensions” of protection for works the renewal term of which was about to expire; these works were thus still in their renewal term when the 1976 Act became effective and had their copyright extended to the full 75-year term. For example, a work published and copyrighted in 1925, and renewed in 1953, would in due course (under the 1909 Act) have fallen into the public domain after 1981; by virtue of the 47-year renewal term as so extended in 1976 and the 20-year extension of 1998, section 304(b) now keeps the copyright in existence through the year 2020.
    It was largely for works such as those from the 1920s and 1930s— motion pictures, songs (by Gershwin, Kern, Berlin and Porter), and novels (by Fitzgerald and Hemingway)—that Congress in 1998 enacted the CTEA, which kept these works from falling into the public domain after 75 years. The earliest works to benefit from the Act were published in 1923, and these will thus fall into the public domain not at the end of 1998 but rather at the end of 2018. Congress’s purposes were to provide for authors’ heirs at a time when individuals are living longer, to give them the benefit of the new technological and entertainment media, and to move the duration of U.S. works into closer conformity to the norm prevailing in Europe (where the long-prevailing term of life-plus-50-years was moved to life-plus-70-years in the course of the 1990s). The 20-year extension granted by the CTEA, and its underlying rationales, were the targets of considerable criticism—particularly with respect to its retroactive application to works already created and published—and ultimately of a challenge that reached the Supreme Court.
    In Eldred v. Ashcroft,[10] decided in 2003, the Court, with two Justices dissenting, sustained the CTEA against claims that the recurrent extensions of copyright violated the “limited times” restriction in the Copyright and Patent Clause of the Constitution; that the retroactive application of the CTEA could not “promote the progress of science” as required by that constitutional clause; and that the CTEA inhibited creative speech in violation of the First Amendment. The Court concluded that no heightened scrutiny was appropriate for assessing the validity of the CTEA; that Congress’s reasons for the 20-year extension were principally a legislative matter and were in any event tenable; and that retroactive application to existing works was a feature of the several congressional term extensions throughout our copyright history stretching back to the early nineteenth century (and even to the first Copyright Act of 1790).
  4. Perhaps the most significant step taken by Congress in the 1976 Act, as originally written, with regard to duration was to provide in section 302(a) that “Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and fifty years after the author’s death.” The drafters of the law had concluded early in the revision process that the “28 plus 28” copyright term was inadequate and should be discarded. Authors were living longer than in 1909, and many were seeing their works fall into the public domain during their lifetime. The growth of communications media was lengthening the commercial life of many works. The renewal format, placing a premium on the definition of the elusive term “publication” as well as on timely renewal applications, resulted in unfairly shortened copyright protection in many cases. Finally, in the words of the House Report, “a very large majority of the world’s countries have adopted a copyright term of the life of the author and fifty years after the author’s death.”[11]
    The move to the formula of “life plus 50” also provided a clear measuring rod for the period of copyright protection and had the convenient byproduct of sending all of an author’s post-1977 works into the public domain at the same time, rather than on varying dates depending upon the date of initial publication.
    By 1998, the nations of the European Union had added 20 years to the copyright term under their respective laws, and Congress decided to follow suit, in large measure to ensure that U.S. authors would have their works protected in Europe for as long as the works of European authors. The CTEA therefore added 20 years to all of the terms then provided in the 1976 Act, including the now life-plus-70 term provided for works first created after January 1, 1978, under section 302(a).
    Having decided in the 1976 Act to measure copyright protection from the death of the author, Congress had to deal with certain instances where such a measure might lead to uncertainty in calculating the term. In the case of a jointly authored work—defined in section 101 as a “work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole”—section 302(b) provides (as amended by the CTEA) that “copyright endures for a term consisting of the life of the last surviving author and 70 years after such last surviving author’s death.” In the case of works made for hire, section 302(c) provides that copyright endures “for a term of 95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.” This term applies whether the “employer–author” of a work made for hire is a human or a corporate person. The 95-from-publication/120-from-creation measuring period also applies to anonymous and pseudonymous works.
  5. The final category of work treated in the 1976 Act—a work created prior to January 1, 1978, but unpublished as of that date—is also made subject to the now “life-plus-70” period of protection. Because this would have the effect of throwing many works immediately into the public domain—for example, unpublished letters or manuscripts of eighteenth and nineteenth century authors—section 303 currently provides: “In no case . . . shall the term of copyright in such a work expire before December 31, 2002; and, if the work is published on or before December 31, 2002, the term of copyright shall not expire before December 31, 2047.” The provision affords such unpublished works 25 years of protection under the federal act, in lieu of the potentially perpetual protection previously afforded by common-law copyright. It also provides the copyright owner of such work with an incentive to publish it during that 25-year period, by offering yet another 45 years of federal protection in the event of such publication.

Under the 1909 Act, the 28- and 56-year periods of protection were measured from the precise date of publication, resulting in often inconvenient calculations. Under section 305 of the 1976 Act, “all terms of copyright provided by sections 302 through 304 run to the end of the calendar year in which they would otherwise expire.” The key date, therefore, for such matters as applying for renewal copyright, the end of the renewal term, and the end of the “life-plus-70” term, will be December 31 of the pertinent year.

Duration and Renewal: The Transition from the 1909 Act to the 1976 Act[edit | edit source]

Date of Work When Protection Attaches First Term Renewal Term
Created in 1978 or later Upon fixation Unitary term of life plus 70 years (or, if anonymous or pseudonymous work, or work for hire, 95 years from publication, or 120 years from creation, whichever is first)
Published 1964–1977 Upon publication with notice 28 years 67 years, second term commenced automatically; renewal registration optional
Published between 1925 and 1963 inclusive Upon publication with notice 28 years 67 years, if renewal was sought, otherwise these works are in the public domain
Published before 1925 The work is now in the public domain
Created, but not published, before 1978 On 1/1/78, when federal copyright displaced state copyright Unitary term of at least life plus 70 years, earliest expiration dates 12/31/2002 (if work remained unpublished) or 12/31/2047 (if work was published by the end of 2002)

References[edit | edit source]

  1. 17 U.S.C. §§ 301(a), (b).
  2. De Sylva v. Ballentine, 351 U.S. 570 (1956).
  3. Venegas-Hernandez v. Asociacion de Compositores, Editores De Musica Latinoamericana, 424 F.3d 50 (1st Cir. 2005); Broadcast Music, Inc. v. Roger Miller Music, Inc., 396 F.3d 762 (6th Cir. 2005). Both courts drew upon the per stirpes ownership principle found in the termination-of-transfer provisions of 17 U.S.C. §§ 203 and 304(c).
  4. 318 U.S. 643 (1943).
  5. See H.R. Rep. No. 94-1476, at 139–40, expressly approving the construction given in Bartok v. Boosey & Hawkes, Inc., 523 F.2d 941 (2d Cir. 1975).
  6. See Kahle v. Ashcroft, 72 U.S.P.Q.2d 1888 (N.D. Cal. 2004) (sustaining constitutionality of automatic-renewal statute against Copyright Clause and First Amendment challenges).
  7. Compare G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951) (the opera Madame Butterfly cannot be converted by initial licensee into a motion picture after renewal of the underlying novel), with Rohauer v. Killiam Shows, Inc., 551 F.2d 484 (2d Cir. 1977) (Valentino film, Son of the Sheik, may be shown on television during the renewal term of the underlying novel).
  8. 495 U.S. 207 (1990).
  9. Transitional and supplementary provisions, section 103.
  10. 537 U.S. 186 (2003).
  11. H.R. Rep. No. 94-1476, at 133–36 (1976).