copyright termination

Top 2014 Entertainment, Trademark & Copyright Law Blog Posts

createprotect - current-trends-ip-entertainment-law-blog-top-posts-2014

Divorced in Motown: Who Gets the Rights?

Image Mathias Miranda CC2.0

Image Mathias Miranda CC2.0

Updated 12/31/2014 - Smokey Robinson and his former wife settle the lawsuit out of court. The parties told the judge, "Due to the complexity of the settlement issues involved in reducing the parties’ agreement to a long form, which issues include having to address different income streams, and possible future uses and disposition of the copyrights and income streams, the parties require additional time to finalize their settlement agreement. The agreement also requires input from family law and music transactional counsel, in addition to litigation counsel."

originally published in TEXAS LAWYER*

Family lawyers worry about a divorce client or the ex-spouse undoing a settlement agreement after the divorce and diverting money or property. Worry is well founded if a client or his/her soon-to-be-former spouse writes songs, books, scripts or otherwise creates things protected by copyright.

Here’s a question: How does a divorced spouse claim a property right that might vest 30 years after the divorce? On March 7, famed songwriter Smokey Robinson filed a declaratory judgment in the U.S. District Court for the Central District of California. He asked the court to find that he had the sole right to reclaim certain copyright assets and that those rights, once reclaimed, vest solely in him. He and Claudette Robinson divorced 25 years ago. She now claims she is entitled to certain revenues from what Smokey Robinson alleges is a new and unvested property right that did not exist during their marriage.

Federal copyright law and state community property law don’t often collide, but when they do, it makes for an interesting case. As set forth in 17 USC §101, a copyright is an original work fixed into a tangible medium of expression. The right vests in the author of the work at the moment of creation.

Federal copyright law and state community property law don’t often collide, but when they do, it makes for an interesting case.
— Tamera H. Bennett

Although California law governs the Robinson case, the analysis is similar under Texas law. In Alsenz v. Alsenz, decided in 2003 by Houston’s First Court of Appeals, Texas fell in line with other community property states. The First Court held that a copyright created during the marriage is community property, and any royalties earned during the marriage are also community property.

In a U.S. Court of Appeals for the Fifth Circuit ruling in Rodrigue v. Rodrigue (1999), which originated in Louisiana, the Fifth Circuit held that federal copyright law does not preempt state family law. Texas adopted this stance in regard to patent law in Alsenz and Sheshtawy v. Sheshtawy (2004). It is a natural extension of Alsenz for Texas courts to find copyright law does not preempt Texas state family law.

Smokey Robinson assigned the copyright in the songs that he wrote during the marriage to his music publisher. That assignment entitled the songwriter to certain royalties from revenue earned by the music publisher from the songs.

Extending the reasoning in Rodrigue to the facts as alleged in Robinson, the royalties earned during the marriage should be community property. Claudette Robinson’s counterclaim filed on May 2 alleges that, upon divorce, there were 453 song copyrights that Smokey Robinson could solely control, but he had a fiduciary duty to her in regard to those songs. And, she was entitled to 50 percent of the royalties from these songs post-divorce.

Upon divorce, a non-creating spouse may negotiate a settlement that entitles him/her to a future royalty revenue stream from the copyright work. The non-creating spouse assumes this revenue stream will last for the life of the copyright.

For songs written by Smokey Robinson and published prior to Jan. 1, 1978, the copyright expires 95 years from publication. For the songs he wrote and published after Jan. 1, 1978, the copyright expires 70 years after his death.

The legislative history to the U.S. Copyright Act states that authors had signed bad deals, leading to loss of revenue streams from their copyrights. To counteract this situation, lawmakers revised the act to allow authors to reclaim assigned copyrights and have a second bite at the apple to enter into better deals.

According to 17 U.S.C §§ 304 and 203, Smokey Robinson, as the author, has the sole right during his life to terminate copyright assignments to the music publishers and reclaim ownership of the copyright in the United States for the 453 songs.

The Copyright Act sets forth detailed requirements on when and how to file such notices to terminate the copyright assignments. According to filings recorded with the U.S. Copyright Office, Smokey Robinson has so far filed notices to terminate the copyright assignments for 16 of the 453 songs and the rights in the 16 songs vested in the songwriter. Eventually, he’ll be able to assign the remaining U.S. copyright term for each song in which the rights vests.

While any of Smokey Robinson’s assignment of rights doesn’t completely cut off the royalties to Claudette Robinson, it could have a substantial impact. She wouldn’t be entitled to royalties from any new revenue streams, as those new revenue streams tie to the new right that vested in Smokey Robinson. Claudette Robinson still would receive her portion of income from prior licenses issued, as well as foreign royalties as those rights are not impacted.

It is unclear how Claudette Robinson will succeed in arguing that the U.S. Copyright Act allows any portion of this new right to vest in her, the divorced spouse. Smokey Robinson must take an affirmative action to terminate the copyright grants. If the songwriter dies before it’s time to take this affirmative action, only then may his then surviving spouse and surviving children (and possibly grandchildren) file the notices of termination.

Also, 17 U.S.C. §203 (b)(4) specifically states that “a further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if it is made after the effective date of the termination.” Even if Smokey Robinson had made a grant of any potential reclaimed copyright term to Claudette Robinson as part of their divorce, the grant would have been invalid and unenforceable.

If the divorce settlement agreement, as alleged by Claudette Robinson, requires her former husband to act as a fiduciary to her, must he do everything he can to protect the 50 percent royalty to which she is entitled? Perhaps contract law, not copyright law, secures her a portion of royalties from this new vested right.

Just maybe, the deal has not been undone at all.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office, PC in Lewisville.

*Reprinted with permission from the July 7, 2014 print edition of Texas Lawyer. © 2014 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.  Read more

Calculating Copyright Grant Terminations

One of the great benefits of our U.S. Copyright law is the ability for creators, authors, songwriters to terminate their assignment of copyright or certain grants/licenses that may have been made related to their copyright.

The copyright grant termination process can often be tedious as there are specific rules created by Congress as to how, when and who has the right to send the notice of termination of the copyright grant.

Our friends and colleagues at Wixen Music made calculating the dates a little easier with their handy online reversion and termination calculator found here.

Music lawyer Tamera Bennett wrote an overview of the process found here.   Click here to see more of Tamera's blog posts on termination of copyright grants.

Copyright Grant Termination Can Undo Songwriter Estate Plan Part 1

Ray Charles planned ahead and gave each of his 12 children $500,000 in trust as their inheritance and required a release of any future claims against his estate.  What he didn't plan on was his heirs (children) exercising their ability under the U.S. Copyright Act to file notice of termination of the copyright assignments for Charles' songs and reclaim those revenue streams.  Charles left the bulk of his estate, including his copyright assets, to The Ray Charles Foundation for the benefit of hearing and seeing impaired persons. There are two schemes for termination of copyright grants under the U.S. Copyright law and they arise from works created and published pre or post January 1, 1978.  Ray Charles' wrote songs and signed copyright assignments falling into both categories, which makes this a very rich fact pattern.  The specific timing requirements for the notices are covered in detail here.

In a legal opinion focused primarily on the applicability of California's Anti-Slapp statute, you'll find some great nuggets on the intersection of estate planning and copyright law.

1.  A copyright grant termination notice is not "a claim against the estate" if probate on the estate has closed.   Which raises the questions: what if probate is still pending? or probate never occurred and the window of time under state law probate proceedings has past? or filing a notice of termination would be timely while probate is pending? or the heirs must file the termination notices before the probate proceedings end to fall with the notice window?

2.  If copyrights were created as "Works for Hire" then the copyrights were never part of the author's estate and filing the notice of termination could not be a claim against the estate.  Of course, no heir wants to argue "work for hire" because anything created as a work for hire does not have a right of termination.

3.  A termination right is inalienable because under the statute, "termination of the grant may be effected notwithstanding any agreement to the contrary, including an agreement to make a will or a future grant."  Does this mean there is no way for an author to control post-death what happens to his/her copyrights?

The opinion in this case was rendered in early 2013.  While notice of an appeal was filed, there has been no additional recorded court activity.  I suspect The Ray Charles Foundation and the heirs are entering into some form of negotiation.  Which leads to Part 2 of this post (coming soon) which addresses why The Ray Charles Foundation needs the Charles' heirs to maximize the value of the Foundation.

I've written numerous times about heirs reversing an estate plan via their statutory rights granted under the U.S. Copyright Act in relationship to Renewal of Copyright and Termination of Copyright Grants.  Read more here, here, and here.

Applicable code sections: 17 U.S.C. 203, 304.

Case cite: The Ray Charles Foundation v. Robinson, 2:12-cv-02725-ABC-FFM, (USDC Cal. 2013).

Entertainment Law Update Podcast - Gordon Firemark and Tamera Bennett

Film lawyer Gordon Firemark and music attorney Tamera Bennett co-host the Entertainment Law Update podcast.  Episode 44 highlights include the "Happy Birthday" public domain litigation; Marvel comics copyright termination lawsuit; and Harper Lee's resolution on ownership of "To Kill A Mockingbird."  Read more and listen here.

Entertainment Law Update Podcast 42 - For IP Lawyers

Film lawyer Gordon Firemark and music lawyer Tamera Bennett bring you a mid-Summer podcast covering film, tv, trademark, copyright and employment law issues. Click here for the July 2013 Entertainment Law Update Podcast.  Be sure to subscribe to the podcast in the iTunes store and share a review.

Copyright Renewal Vests in Sony not Roger Miller's Heirs

For works published or copyrighted prior to January 1, 1978, the sixth circuit court of appeals made a landmark decision holding the copyright renewal term vests in the music publisher when the author dies during the twenty-eighth year after copyright was secured -- the last year of the fist copyright term. The history of the case can be found here and here.  Miller's heirs have been in a litigation with Sony Music Publishing for years over who owns the songs that Miller wrote in 1964.  Miller died in 1992, the 28th year after writing songs such as “King of the Road” and “Dang Me.”

It takes a family with assets to pursue litigation to trial, appeal and back again.  The Miller estate has helped to clarify, at least in the sixth circuit, an unanswered question in copyright law.

Read the opinion here.

Entertainment Law Update Podcast 26: Zombies, Crowds, & Trees


Take a listen to the latest edition of the Entertainment Law Update Podcast with co-hosts L.A.  film lawyer Gordon Firemark and Texas-based music lawyer Tamera Bennett. I would like to give a personal shout-out and thank you to Gordon for bringing me on board for this great podcast.  I am looking forward to an amazing 2012 for the podcast and can't wait to see who might be making a surprise visit as guest co-host!

Copyright Grant Termination: 2009 and 2010 Cases of Interest

Copyright grant terminations under sections 203 and 304 are hot topics in the news and at the courthouse the past 12 months.  2013 will be the first year that terminations can be effective under 17 USC Section 203.... if notice of termination was proper.   For a general overview of the termination process click here for an article written by music lawyer Tamera H. Bennett for the Texas Entertainment Law Institute. Some of the copyright grant terminations cases gainingrecent attention include:

  • U.S. Supreme Court declines to hear appeal of John Steinbeck estate.  The Second Circuitoverturned a lower court's decision and maintained copyrights assigned to Penguin Book Group from Steinbeck's widow.  This extremely fact specific case turned on the fact that Steinbeck's wife terminated and renegotiated Steinbeck's 1939 agreement with Penguin.  This renegotiation in 1994 "cut-off" the rights of Steinbeck's children from his first marriage.  Penguin Group (USA) v. Steinbeck, 537 F.3d 193 (2d Cir. 2008), cert. denied 2009. 
  • A Southern District of New York judge ruled the heirs of comic artist Jack Kirby, were subject to transactional jurisdiction under a New York statute by sending copyright transfer termination notices pursuant to 17 USC 304(c).  More information about the case is found hereMarvel Worldwide, Inc. v. Kirby, 2010 WL 1655253 (April 14, 2010)
  • Charlie Daniels' “The Devil Went Down to Georgia,”was written in 1979, but Copyright Termination could be subject to agreements he signed with Universal Music Publishing Group pre-1978.  This possible "gap" in the copyright law between Section 203 and Section 304 is under review at the Copyright Office.
  • Sherlock Holmes is not yet PD.  Some of the early Sherlock Holmes' works are public domain, but many are not yet.  Some works were recaptured in 1981 and will remain under U.S. Copyright until 2023, although protection has long expired in the U.K.
  • Superman sends valid copyright termination notices.  This blog post gives some great insight to what is required to send a valid notice of termination under 17 USC Section 304(c).  Siegel v. Warner Bros. Entertainment, Inc., CV-04-8400-SGL (RZx),  2009 WL 2512842 (C.D. Cal. 2009).