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



Subtitles / Closed Captions - English

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.



Video Description

The terms on which this lecture may be used or modified are available at http://copyx.org/permission.

The lecture was prepared for a Harvard Law School course on Copyright Law, and for the CopyrightX course, offered under the auspices of HarvardX. Information concerning both courses can be found at http://copyx.org.