No. 19-1181
`In the
`Supreme Court of the United States
`
`THE ESTATE OF THOMAS STEINBECK, GAIL KNIGHT
`STEINBECK, AND THE PALLADIN GROUP, INC.,
`Petitioners,
`
`vs.
`WAVERLY SCOTT KAFFAGA, as Executor of the
`Estate of Elaine Anderson Steinbeck,
`Respondent.
`
`____________________________
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`BRIEF OF AMICI CURIAE THE AUTHORS
`GUILD INC., DRAMATISTS GUILD OF
`AMERICA, INC., THE AMERICAN SOCIETY OF
`JOURNALISTS AND AUTHORS and RALPH
`OMAN IN SUPPORT OF PETITIONERS
`
`
`
`
`
`
`
`
`RAYMOND J. DOWD
`Counsel of Record
`OLIVERA MEDENICA
`DUNNINGTON BARTHOLOW
`& MILLER LLP
`230 Park Avenue, 21st Floor
`New York, New York 10169
`(212) 682-8811
`rdowd@dunnington.com
`Attorneys for Amici Curiae
`
`
`In the
`Supreme Court of the United States
`
`THE ESTATE OF THOMAS STEINBECK, GAIL KNIGHT
`STEINBECK, AND THE PALLADIN GROUP, INC.,
`Petitioners,
`
`vs.
`WAVERLY SCOTT KAFFAGA, as Executor of the
`Estate of Elaine Anderson Steinbeck,
`Respondent.
`
`____________________________
`ON PETITION FOR A WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`BRIEF OF AMICI CURIAE THE AUTHORS
`GUILD INC., DRAMATISTS GUILD OF
`AMERICA, INC., THE AMERICAN SOCIETY OF
`JOURNALISTS AND AUTHORS and RALPH
`OMAN IN SUPPORT OF PETITIONERS
`
`
`
`
`
`
`
`
`RAYMOND J. DOWD
`Counsel of Record
`OLIVERA MEDENICA
`DUNNINGTON BARTHOLOW
`& MILLER LLP
`230 Park Avenue, 21st Floor
`New York, New York 10169
`(212) 682-8811
`rdowd@dunnington.com
`Attorneys for Amici Curiae
`
`
`
`
`
`i
`
`Table of Contents
`
`Page
`TABLE OF AUTHORITIES ....................................... iv
`INTEREST OF AMICI CURIAE ................................ 1
`SUMMARY OF ARGUMENT ..................................... 4
`ARGUMENT ............................................................... 7
`I. THE ISSUE OF COPYRIGHT
`TERMINATION RAISED BY THIS
`CASE IS OF EXTRAORDINARY
`IMPORTANCE BECAUSE RELIANCE
`ON LEGISLATIVE INTENT TO
`UNDERMINE INALIENABLE
`FUTURE TERMINATION RIGHTS
`GRANTED BY THE PLAIN
`LANGUAGE OF THE COPYRIGHT
`ACT IS CAUSING UNCERTAINTY
`AND PROMPTING LITIGATION
`NATIONWIDE ............................................ 7
`A. In the 1976 Copyright Act
`Congress Makes Termination of a
`Prior Transfer an Inalienable
`Right of Recapture ............................ 11
`B. Congress Permitted Termination
`of Copyright Grants Made Prior to
`the 1976 Act ....................................... 13
`C. 1998–Congress Extends Copyright
`Duration Again, Grants Authors a
`Second Inalienable Right of
`Recapture ........................................... 13
`
`
`
`
`
`ii
`
`D. To Avoid Authors and Families
`Alienating Their Rights Before
`Having Full Economic Power,
`Congress Invalidates Grants of
`Termination Rights That Pre-Date
`The Effective Date of Termination ... 14
`E. The Copyright Office Is Giving
`Advice To The Public That
`Conflicts With The Decision Below .. 15
`II. BECAUSE COLLATERAL ESTOPPEL
`WAS APPLIED TOO BROADLY,
`PETITIONERS WERE DEPRIVED OF
`PROPERTY RIGHTS AND THE
`RIGHT TO A JURY TRIAL
`GUARANTEED BY THE SEVENTH
`AMENDMENT TO THE UNITED
`STATES CONSTITUTION ....................... 15
`A. The Application of Collateral
`Estoppel To Preclude Gail’s
`Defenses Was Particularly Unjust
`Because She Was Not A Party To
`The First-Filed Litigation
`Involving The Scope of Collateral
`Estoppel ............................................. 16
`B. This Second-Filed Diversity Action
`For Breach of Contract and
`Tortious Interference ........................ 18
`C. The Trial Court’s Exclusion of
`Petitioners’ Copyright Law Expert ... 19
`
`
`
`
`
`iii
`
`III. THE DECISION BELOW
`THREATENS THE UNIFORMITY OF
`THE NATIONAL COPYRIGHT
`REGIME BECAUSE IT PERMITTED
`A MONETARY JUDGMENT ON
`CALIFORNIA TORT CLAIMS
`INCONSISTENT WITH THE
`PREEMPTION OF SECTION 301 OF
`THE COPYRIGHT ACT AND
`GRANTING REVIEW COULD
`RESOLVE A CIRCUIT SPLIT ................. 20
`IV. IN THE ALTERNATIVE, BECAUSE
`THIS CASE RAISES IMPORTANT
`QUESTIONS INVOLVING THE
`COPYRIGHT OFFICE’S
`ADMINISTRATION OF
`TERMINATION RIGHTS AND
`ADVICE TO THE PUBLIC, THIS
`COURT SHOULD SOLICIT THE
`VIEWS OF THE SOLICITOR
`GENERAL ................................................. 22
`V. IN THE ADDITIONAL
`ALTERNATIVE, AMICI CURIAE
`RESPECTFULLY REQUEST THAT
`THIS COURT GRANT, VACATE AND
`REMAND FOR A RULING ON
`WHETHER THE 1983 AGREEMENT
`IS AN “AGREEMENT TO THE
`CONTRARY” WITH RESPECT TO
`THE FILM RIGHTS TO GRAPES OF
`WRATH AND EAST OF EDEN ............... 22
`CONCLUSION .......................................................... 25
`
`
`
`
`
`
`
`iv
`
`Table of Authorities
`
`Page(s)
`
`Cases
`Altera Corp v. Clear Logic, Inc.,
`424 F.3d 1079 (9th Cir. 2005) ................................ 21
`Baldwin v EMI Feist Catalog, Inc.,
`805 F.3d 18 (2d Cir. 2015) ......................... 11, 12, 14
`Clark v. Young & Co.,
`5 U.S. (1 Cranch) 181 (1803) ................................. 16
`Feltner v Columbia Pictures Tel., Inc.,
`523 U.S. 340 (1998) ................................................ 16
`Fred Fisher Music Co., Inc. v. M. Witmark & Sons,
`318 U.S. 643 (1943) ...................................... 9, 10, 11
`G. Ricordi & Co. v. Paramount Pictures, Inc.,
`189 F.2d 469 (2d. Cir.),
`cert. denied, 342 U.S. 849 (1951) ........................... 10
`Harper & Row Publishers, Inc. v. Nation Enters.,
`723 F.2d 195 (2d Cir. 1983)
`rev’d on other grounds, 471 U.S. 539 (1985) ......... 21
`Kaffaga v. Estate of Steinbeck,
`938 F.3d 1006 (9th Cir. 2019) .................................. 5
`Kaffaga v. Steinbeck,
`18:55336, 12/07/2018 ....................................... 18, 19
`Kaffaga v. Steinbeck,
`2016 WL 11187014 (C.D. Ca. 11/10/2016) ...... 17, 18
`Kaffaga v. Steinbeck,
`Case 2:14-cv-08699-TJH-FFM (C.D. Cal.)
`Docket Number 171-2 1/18/2017 ............................. 8
`
`
`
`
`
`v
`
`Lucky Brands Dungarees, Inc.
`v. Marcel Fashion Group, Inc.,
`No. 18-1086 (argued Jan. 13, 2020) ............ 6, 23, 25
`Mills Music, Inc. v. Snyder,
`469 U.S. 153 (1985) ................................................ 11
`Milne ex rel. Coyne v. Stephen Schesinger, Inc.,
`430 F.3d 1036 (9th Cir. 2005) .................................. 7
`Penguin Group (USA) Inc. v. Steinbeck,
`537 F.3d 193 (2008),
`cert. denied 556 U.S. 1253 (2009) ..................... 7, 17
`Progressive Corp. v. Integon P&C Corp.,
`947 F.2d 942 (4th Cir. 1991) .................................. 21
`Steinbeck v. Kaffaga,
`702 Fed.Appx. 618 (9th Cir. 2017) ........................ 17
`Stromback v New Line Cinema,
`384 F.3d 283 (6th Cir. 2004) .................................. 21
`Stuart v. Abend,
`495 U.S. 207 (1990) ................................................ 19
`Taylor v. Sturgell,
`553 U.S. 880 (2008) .................................................. 5
`Telecom Technical Servs. Inc. v. Rolm Co.,
`388 F.3d 820 (11th Cir. 2004) ................................ 21
`Statutes
`17 U.S.C. § 101 ............................................................ 4
`17 U.S.C. § 203 .............................. 1, 2, 3, 8, 10, 13, 14
`17 U.S.C. § 301 ...................................................... 6, 20
`17 U.S.C. § 304 .................................... 1, 2, 3, 8, 10, 14
`
`
`
`
`
`vi
`
`17 U.S.C. § 304(c) ........................................ 7, 8, 13, 17
`17 U.S.C. § 304(c)(5) .................... 7, 8, 9, 14, 18, 22, 23
`17 U.S.C. § 304(c)(6) .................................................. 11
`17 U.S.C. § 304(c)(6)(D) ................................. 7, 8, 9, 14
`17 U.S.C. § 304(d) ............................................ 8, 13, 17
`17 U.S.C. § 304(d)(1) ................................................. 14
`Pub. L. No. 105-298, 111 Stat. 2827 (1998) .............. 13
`Other Authorities
`1976 U.S.C.C.A.N. 5659 ............................................ 12
`Bauer, Joseph, Addressing The Incoherency
`Of The Preemption Provision Of The
`Copyright Act Of 1976,
`10 Vand. J. Ent. & Tech. L. 1 (Fall 2007) ............. 20
`Evynne Grover, Copyright Act S 203 Termination of
`Transfers and Licenses: Could More Blockbusters
`Get Busted?, Comm Law, Winter 2020 ................... 9
`H.R. REP. 94-1476 .............................................. 12, 14
`H.R. Rep. No. 60-2222 ............................................... 10
`https://www.copyright.gov/recordation/
`termination.html ................................................... 15
`Peter S. Menell & David Nimmer,
`Judicial Resistance to Copyright Law's
`Inalienable Right to Terminate Transfers,
`33 Colum J.L. & Arts 227 (2010) .................... 10, 12
`Pub. L. No. 105-298, 111 Stat. 2827 (1998) .............. 13
`
`
`
`
`
`vii
`
`Pub. L. No. 349 §24, 35 Stat. 1075,
`1080-81 (1909) ........................................................ 10
`Pub. L. No. 349, §§ 23-24, 35 Stat. 1075,
`1080-81 (1909) ........................................................ 10
`Senator Orrin G. Hatch, Toward A Principled
`Approach to Copyright Legislation at the
`Turn of the Millennium,
`59 U. Pitt. L. Rev. 719 (1998) ................................ 13
`Staff of H. Comm. on the Judiciary, 88th Cong.,
`Discussion and Comments on the Report
`of the Register of Copyrights on the General
`Revision of the U.S. Copyright Law, 93
`(Comm. Print 1963) ............................................... 10
`
`
`
`
`
`1
`
`INTEREST OF AMICI CURIAE1
`Amicus curiae Authors Guild, Inc. is the nation’s
`oldest and largest professional organization for all
`working and aspiring writers with approximately
`10,000 members, writers of all forms of nonfiction and
`fiction. The Authors Guild promotes the rights and
`professional interests of authors in various areas,
`including freedom of expression and copyright.
`Consistent with its mission, the Authors Guild has a
`strong interest in the economic interests in copyrights
`of authors and their heirs. The Authors Guild helped
`to draft the Copyright Act of 1976 and the Copyright
`Term Extension Act of 1998. When Congress extended
`the term of copyright in 1976 and again in 1998
`granting inalienable economic rights to authors and
`their heirs under the plain language of Section 203
`and 304 of the Copyright Act, Authors Guild members
`looked forward to a significant share of the economic
`benefit.
`Absent a clarification of grant termination rights by
`this Court, the Authors Guild members, as well as
`their family members, will suffer serious economic
`consequences and their families will be subjected to
`uncertainty and disputes over state inheritance,
`contract and tort law issues that Congress sought to
`avoid by drafting the Copyright Act to preempt state
`law. The Authors Guild’s members all have an
`interest in achieving clarity to avoid their families
`
`1 Pursuant to Sup. Ct. R. 37.6, amici curiae state that no counsel
`for any party authored this brief in whole or in part and no party
`or counsel for any party made a monetary contribution intended
`to fund the preparation or submission of this brief. Only amici
`curiae made such monetary contributions. All parties have
`received notice and consented to the filing of this brief.
`
`
`
`
`
`2
`
`being subjected, as individual Petitioner was, to
`multimillion-dollar judgments under state tort law
`theories for attempting – whether correctly or
`incorrectly – to assist a family member exercising
`termination rights under section 304 of the Copyright
`Act.
`Amicus curiae Dramatists Guild of America, Inc.
`(the “Dramatists Guild”) is a 501(c)6 trade association
`(currently with over 8,000 members) that has been
`advocating for playwrights, composers, lyricists and
`librettists for over hundred years. In 2009, the Guild
`established The Dramatists Legal Defense Fund, a
`501(c)(3) corporation, to advocate not only for writers,
`but for theaters and other theater artists (as well as
`audiences, schools, students, and the culture at large)
`confronting censorship and other related legal issues
`of public import, including assaults on copyright and
`diminishment of the public domain.
`Like the Authors Guild, the Dramatists Guild
`promotes the interests of authors in their works,
`including their rights of property, artistic integrity,
`and compensation, and so has a similarly strong
`interest in this case which affects the economic
`interests in copyrights of all dramatists and their
`heirs. It is common in the theater industry for an
`author to be on both sides of the termination rights set
`forth in sections 203 and 304 of the Copyright Act. A
`dramatist may wish to terminate a contract with a
`publisher or motion picture studio; similarly, that
`same dramatist may have adapted a book (e.g.,
`Hamilton adapted to a musical by Lin-Manuel
`Miranda) or a motion picture (e.g., Grey Gardens,
`adapted to a musical by Doug Wright, Michael Korie,
`and Scott Frankel) and be subject to termination
`rights
`from
`those underlying
`rights owners.
`
`
`
`
`
`3
`
`Therefore, in its advocacy for both copyright owners
`and copyright users, the Guild has a unique
`perspective – and duty – to present a balanced and
`reasoned view on this issue without an ideological
`predisposition one way or the other.
`In addition to sharing the interests in clarity and
`certainty as expressed by the Authors Guild,
`dramatists require clarification of termination rights
`to minimize transaction costs in acquiring rights to
`copyrighted works and in achieving certainty in the
`ability to create derivative works and to exploit such
`works. In drafting Sections 203 and 304 of the
`Copyright Act, Congress sought to avoid a patchwork
`of confusing state laws that made acquiring rights to
`many valuable copyrighted works impossible due to
`uncertainty over ownership. Instead, dramatists must
`now look to state law and contracts, such as the
`disputed 1983 Agreement at bar, to venture guesses
`as to who owns what. Therefore, the Guild has a
`strong interest in a transparent, central federal
`copyright registry maintained by the Copyright
`Office, with ownership governed by the Copyright Act
`rather than the vagaries of state inheritance and
`contract law.
`Amicus curiae American Society of Journalists and
`Authors (“ASJA”), founded in 1948, is the nation’s
`professional
`association
`of
`independent
`and
`entrepreneurial nonfiction writers. ASJA represents
`the interests of freelancers and promotes their rights
`to control and profit from the uses of their work
`wherever it appears.
`Amicus curiae Ralph Oman served as the Register
`of Copyrights from 1985 to 1993. As Register, he
`advised Congress on copyright policy and testified
`
`
`
`
`
`4
`
`forty times on proposed copyright
`more than
`legislation and treaties, and on the state of the U.S.
`Copyright Office. Before then, Mr. Oman served on
`the
`staff of
`the Subcommittee on Patents,
`Trademarks, and Copyrights, including as Chief
`Counsel from 1982-85. He was personally involved in
`the final stages of the drafting and passage of the
`Copyright Act of 1976, 17 U.S.C. §§ 101 et seq. Mr.
`Oman is currently the Pravel, Hewitt, Kimball, and
`Kreiger Professorial Lecturer in Intellectual Property
`and Patent Law at The George Washington
`University Law School, where he has taught copyright
`law for twenty-six years. Given his prior service in
`the development of U.S. copyright law, Mr. Oman has
`a direct interest in the proper resolution of the issue
`presented by this case.
`SUMMARY OF ARGUMENT
`Amici agree with Petitioner that the circuit split on
`federal issue preclusion doctrine relating to copyright
`termination rights warrants this Court’s review.
`Petition at 22-26. Binding a non-party to a litigation
`result where the party was not represented offends
`due process. The dangers of failing to apply issue
`preclusion analysis to each party and each issue are
`highlighted in this complex case in which a widow who
`was a non-party to any prior litigation was stripped of
`all affirmative defenses and subjected to a multi-
`million dollar judgment for slander of title and
`tortious
`interference with contract simply
`for
`asserting her late husband’s copyright ownership.
`The complaint against Gail alleged that she had acted
`as attorney-in-fact for her late husband Thom
`Steinbeck (and Petitioner Palladin Inc. to which Thom
`had transferred his copyrights) when Gail (again
`allegedly) falsely asserted Thom’s and Palladin’s
`
`
`
`
`
`5
`
`copyright ownership of The Grapes of Wrath and East
`of Eden. At a trial occurring after Thom’s death,
`Petitioners were not permitted by the federal district
`court to present an expert copyright attorney’s opinion
`that Thom’s estate and Palladin owned
`the
`copyrights. Nor was Gail permitted to offer the jury
`the copyright expert’s legal advice to prove her state
`of mind in support of her affirmative defenses of good
`faith and justification to tort law claims that, under
`California state law, required proof of Gail’s state of
`mind. In affirming, the Ninth Circuit Court of
`Appeals called the jury’s calculations of the award
`“indeed suspicious.”2 In light of this Court’s teachings
`in Taylor v. Sturgell, 553 U.S. 880 (2008)(abolishing
`the doctrine of virtual representation), Amici cannot
`fathom how collateral estoppel could possibly have
`barred any of Gail’s affirmative defenses in this action
`to tort law claims to which truth was a defense and
`which required proof of her state of mind.
`In addition to the circuit split identified by
`Petitioners, Amici proffer five additional arguments
`in support of this Court’s intervention. First, the
`inalienability of authors’ copyright termination rights
`guaranteed by the plain language of the Copyright Act
`has been undermined by circuit courts finding the
`language ambiguous and resorting to legislative
`history to change the result intended by Congress ---
`to the detriment of authors. Amici proffer legislative
`history in support of the Copyright Act’s plain
`language and urge this Court to grant review to guide
`
`2 Kaffaga v. Estate of Steinbeck, 938 F.3d 1006 (9th Cir.
`2019)(“The fact that the jury gave $1.3 million for both slander
`and breach and, when combined, now nearly equal the $2.65
`million awarded for tortious interference is indeed suspicious”).
`
`
`
`
`
`6
`
`the nation on this important economic issue. Second,
`Petitioners – and most egregiously Gail – were
`deprived of property rights in copyrights in violation
`of the Seventh Amendment’s guarantee of a jury trial
`by the decision below, stripping Petitioners of all
`defenses. Third, because the circuits are also split on
`whether Section 301 of the Copyright Act preempts
`tortious interference with contract claims that – as in
`this case -- resemble copyright ownership or copyright
`ownership claims, reviewing this case would resolve
`that split as well. Fourth, because the important
`issues raised in this case involve the administration
`of the Copyright Office, Amici urge this Court to solicit
`the views of the Solicitor General. Because the tort
`law claims asserted against Petitioners were
`equivalent to copyright ownership or infringement
`claims, they are preempted. Fifth, if this Court
`decides not to grant full review, Amici agree with
`Petitioners that a grant, vacatur and remand in light
`of Lucky Brands Dungarees, Inc. v. Marcel Fashion
`Group, Inc., No. 18-1086 (argued Jan. 13, 2020) would
`serve the interests of justice by preserving Petitioners’
`important rights.
`
`
`
`
`
`7
`
`ARGUMENT
`I. THE ISSUE OF COPYRIGHT
`TERMINATION RAISED BY THIS CASE IS
`OF EXTRAORDINARY IMPORTANCE
`BECAUSE RELIANCE ON LEGISLATIVE
`INTENT TO UNDERMINE INALIENABLE
`FUTURE TERMINATION RIGHTS
`GRANTED BY THE PLAIN LANGUAGE OF
`THE COPYRIGHT ACT IS CAUSING
`UNCERTAINTY AND PROMPTING
`LITIGATION NATIONWIDE
`This case presents an issue of extraordinary
`importance to all authors and their families and to the
`economics of the nation. The inalienability of the
`rights of authors and their heirs to terminate
`assignments or transfers of extended terms of
`copyrights despite any prior “agreement to the
`contrary” is guaranteed in Section 304(c)(5) of the
`Copyright Act. Congress made doubly sure of
`guaranteeing inalienability from over-reaching family
`members by permitting statutory heirs to void “future
`grants” of termination rights made before the effective
`date of
`termination
`in Section 304(c)(6)(D).
`Discovering ambiguity in the statutory language of
`Section 304(c), the Second and Ninth Circuits resorted
`to legislative history to determine that the words “any
`agreement to the contrary” meant the complete
`opposite, thereby frustrating Congress’ intent. See
`Milne ex rel. Coyne v. Stephen Schesinger, Inc., 430
`F.3d 1036, 1045 (9th Cir. 2005)(agreeing with Second
`Circuit’s finding of ambiguous language). In Penguin
`Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2008),
`cert. denied 556 U.S. 1253 (2009), a case involving
`John Steinbeck’s grant of certain publishing rights to
`Viking Books, the Second Circuit permitted heirs to
`
`
`
`
`
`8
`
`be disinherited and defeated the future termination
`rights of authors’ heirs by honoring a grant of future
`termination rights prior to the vesting date specified
`by Congress for valid “further grants” in violation of
`Section 304(c) and (d).
`In this case, the Ninth Circuit dealt another blow to
`authors’ termination rights by permitting collateral
`estoppel to defeat Section 304 termination rights in
`“all of John Steinbeck’s works” where Thom and
`Blake’s termination of the film rights in question here,
`involving an entirely different 1939 Steinbeck grant
`of film rights, had never been decided by any court.
`Kaffaga v. Steinbeck, Case 2:14-cv-08699-TJH-FFM
`(C.D. Cal.) Docket Number 171-2 1/18/2017 (Grapes of
`Wrath copyright report describing 1939 Steinbeck
`film rights grant). Because the inalienable property
`rights created by Sections 203 and 304 of the
`Copyright Act are largely defeated by these decisions
`honoring grants prohibited by the Copyright Act
`because they were made prior to the effective vesting
`date specified by Congress in Section 304(c)(6)(D), this
`case raises issues of extraordinary importance on
`which this Court’s guidance is necessary.
`Unlike these courts, Amici find no ambiguity in the
`plain language of the Copyright Act. Amici find only
`resounding support in the legislative history for
`inalienable authors’ termination rights. Additionally,
`because decisions from the Second and Ninth Circuits
`conflict with guidance given to the public by the
`Register of Copyrights and the U.S. Copyright Office
`on the inalienable nature of copyright termination
`rights under Section 304(c)(5) and Section
`304(c)(6)(D), this issue is important.
`
`
`
`
`
`9
`
`This case is an appropriate vehicle to address the
`important and unsettled issue of termination rights
`because since 1976, authors have not had guidance
`from this Court on Congress’ efforts to protect them
`under Section 304 by using “notwithstanding any
`agreement to the contrary” prophylactic language of
`Section
`304(c)(5)
`and Section
`304(c)(6)(D)’s
`prohibition on “future grants” of termination rights.
`As a result, thousands of authors are left in
`uncertainty over their rights and bargaining power.
`The issue of authors’ inalienable rights in recapturing
`extended copyright terms has roiled the courts since
`1909 when Congress extended the then-28-year
`copyright term by an additional 28-year renewal term
`with the expectation that the renewal term would
`revert
`to authors.
` Disputes over copyright
`terminations now occupying the nation’s courts could
`be resolved by guidance from this Court not only
`under Section 304, but also under Section 203 of the
`Copyright Act (triggered by statute starting January
`1, 2013). Evynne Grover, Copyright Act S 203
`Termination of Transfers and Licenses: Could More
`Blockbusters Get Busted?, Comm Law, Winter 2020,
`at 23, 28 (“Without question, terminations under §
`203 will create a new wave of litigation, and we have
`already seen some of it…”).
`In 1909, in 1976 and again in 1998, each time
`Congress extended the term of copyright, authors
`were the promised future beneficiaries of these
`expanded copyright terms. Congress’ intent to protect
`authors from early, unremunerative transactions and
`to ensure them full economic benefits from a second
`28-year renewal term was thwarted by this Court’s
`decision in Fred Fisher Music Co., Inc. v. M. Witmark
`& Sons, 318 U.S. 643 (1943). In 1976 and 1998,
`Congress made the express “policy choice” in enacting
`
`
`
`
`
`10
`
`Sections 203 and 304 of the Copyright Act to give
`inalienable termination rights to authors that,
`according to Fred Fisher Music, Congress failed to
`make explicit in the 1909 Act.
`Prior to the 1976 Copyright Act, the renewal
`recapture provision was “the source of more confusion
`and litigation than any other provision in copyright
`law.” Peter S. Menell & David Nimmer, Judicial
`Resistance to Copyright Law's Inalienable Right to
`Terminate Transfers, 33 Colum J.L. & Arts 227, 227-
`30 (2010) citing Staff of H. Comm. on the Judiciary,
`88th Cong., Discussion and Comments on the Report
`of the Register of Copyrights on the General Revision
`of the U.S. Copyright Law, 93 (Comm. Print 1963).
`The initial term of a copyright under the 1909
`Copyright Act was 28 years. Pub. L. No. 349 §24, 35
`Stat. 1075, 1080-81 (1909). Under the 1909 Act,
`authors also held the right to renew for an additional
`28 years by filing a renewal application with the
`Copyright Office. Pub. L. No. 349, §§ 23-24, 35 Stat.
`1075, 1080-81 (1909). Congress intended this right to
`be “exclusive” to authors and their families so that
`they “could not be deprived of this right.” Menell &
`Nimmer, Judicial Resistance, 33 Colum J.L. & Arts at
`230 (2010) citing H.R. Rep. No. 60-2222, at 14 (1909).
`The renewal right “creates a new estate, and the ...
`cases which have dealt with the subject assert that the
`new estate is clear of all rights, interests or licenses
`granted under the original copyright.” G. Ricordi &
`Co. v. Paramount Pictures, Inc., 189 F.2d 469, 471 (2d.
`Cir.), cert. denied, 342 U.S. 849 (1951). In Fred Fisher
`Music Co., Inc. v. M. Witmark & Sons, 318 U.S. 643
`(1943) this Court upheld an author's assignment of
`the future right to renew a copyright, reasoning that
`if Congress had intended “statutory restraints upon
`
`
`
`
`
`11
`
`the assignment by authors of their renewal rights, it
`is almost certain that such purpose would have been
`manifested.” 318 U.S. at 655-56.
`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 do not have such assured
`knowledge about authorship ... as to
`justify us as judges in importing into
`Congressional legislation a denial to
`authors of the freedom to dispose of their
`property .... 318 U.S. at 657.
`Congress' attempt in 1909 to grant authors and
`their families an inalienable future copyright interest
`thus “was substantially thwarted” by Fred Fisher
`Music. Mills Music, Inc. v. Snyder, 469 U.S. 153, 185
`(1985) (White, J., dissenting).
`A.
`In the 1976 Copyright Act Congress
`Makes Termination of a Prior Transfer
`an Inalienable Right of Recapture
`Under the 1976 Copyright Act, when an author (or
`statutory heirs) serves a termination notice, the
`grantee's previously undivided copyright interest is
`effectively split into three pieces, one owned by the
`author (or statutory heirs) and two owned by the
`grantee. The author (or statutory heirs) holds a future
`interest in the copyright. Baldwin v EMI Feist
`Catalog, Inc., 805 F.3d 18, 26-27 (2d Cir. 2015) citing
`17 U.S.C. § 304(c)(6) (providing that the “rights under
`this title that were covered by the terminated grant
`revert, upon the effective date of termination, to th[e]
`author” or his statutory heirs”); Mills Music, Inc. v.
`Snyder, 469 U.S. at 162,
`(labeling the post-
`termination interest a “reversion”). This future
`
`
`
`
`
`12
`
`interest, however (unlike an author's renewal right
`under the 1909 Act), “become[s] vested on the date the
`notice of termination has been served.” Baldwin v
`EMI Feist Catalog, Inc., 805 F.3d at 26-27. Congress’
`intent to permit authors and their families to get a
`second economic bite at the apple was manifest:
`The provisions of section 203 are based
`on the premise that the reversionary
`provisions of the present section on
`copyright renewal (17 U.S.C. § 24)
`should be eliminated, and that the
`proposed law should substitute for them
`a provision safeguarding authors against
`unremunerative transfers. A provision of
`this sort is needed because of the
`unequal bargaining position of authors,
`resulting in part from the impossibility
`of determining a work's value until it has
`been exploited.
`H.R. REP. 94-1476, 124, 1976 U.S.C.C.A.N. 5659,
`5740. Congress enacted the Copyright Act of 1976 to
`safeguard not only authors against unremunerative
`transfers but authors’ families that had in many cases
`been victimized by transfers made by an early heir,
`such as a stepmother to the detriment of later heirs or
`late-life transfers to lovers, sparking probate battles.
`Menell & Nimmer, Judicial Resistance, 33 Colum J.L.
`& Arts 227 (2010)(discussing legislative history and
`how permitting early statutory heirs to disinherit
`later statutory heirs would frustrate Congressional
`intent).
`
`
`
`
`
`13
`
`B. Congress Permitted Termination of
`Copyright Grants Made Prior to the
`1976 Act
`The 1976 Act provided that grants of copyright
`made under the new regime would be terminable after
`thirty-five years from the date of the grant (the § 203
`termination right), while grants of copyright made
`under the 1909 Act would be terminable fifty-six years
`after copyright was first obtained (the § 304(c)
`termination right). 17 U.S.C. §§203; 304(c). The
`opportunity to leave a legacy to one's children and
`grandchildren operates as an important incentive to
`create. Senator Orrin G. Hatch, Toward A Principled
`Approach to Copyright Legislation at the Turn of the
`Millennium, 59 U. Pitt. L. Rev. 719, 733 (1998). Thus,
`Congress determined that the new property right of
`an extended copyright term should pass to the author
`and
`independently protect the author’s
`family
`members as statutory successors (husband or wife,
`children and grandchildren) as opposed to copyright
`devisees – like a late life lover – or assignees like a
`film or publishing company.
`C. 1998–Congress Extends Copyright
`Duration Again, Grants Authors a
`Second Inalienable Right of Recapture
`In 1998, the Sonny Bono Copyright Term Extension
`Act (“CTEA”) extended copyright terms for another
`twenty years. Pub. L. No. 105-298, 111 Stat. 2827
`(1998). Wishing to bestow property rights in this
`additional term on authors and their families,
`Congress again adopted the same termination device.
`17 U.S.C. § 304(d) (2006). Section 304(d) granted
`authors and their statutory successors, who had not
`already exercised a statutory termination rights, a
`
`
`
`
`
`14
`
`allowing
`right,
`termination
`statutory
`new
`termination of agreements by which the author had
`sold the extended term, “notwithstanding any
`agreement to the contrary.” Id. §§ 304(c)(5) &
`304(d)(1).
`D. To Avoid Authors and Families
`Alienating Their Rights Before Having
`Full Economic Power, Congress
`Invalidates Grants of Termination
`Rights That Pre-Date The Effective
`Date of Termination
`Section 304(c)(6)(D) provides 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.
`Baldwin v EMI Feist Catalog, Inc., 805 F.3d at 26
`(noting exception for further grant to grantee after
`notice of termination). In enacting Section 304,
`Congress intended to void any attempts by heirs to
`transfer contingent future interests:
`Under section 203, an author's widow or
`widower and children are given rights of
`termination if the author is dead, but
`these rights apply only to grants by the
`author, and any effort by a widow,
`widower, or child to transfer contingent
`future interests under a termination
`would be ineffective.
`H.R. REP. 94-1476, 141, 1976 U.S.C.C.A.N. 5659,
`5757. This provision creates a carefully-crafted
`timetable for vesting of termination rights over an
`extended period of time showing Congress' intent to
`give specific living statutory successors the benefits of
`property rights in an extended term of copyright
`
`
`
`
`
`15
`
`protection, rather than the author's assignees or
`devisees. The vesting timetable, expressed in the
`statutory language as a strict and total ban on future
`grants, also prevents future disputes over whether
`one heir, such as a stepmother, has disenfranchised
`future beneficiaries of termination rights.
`E. The Copyright Office Is Giving Advice
`To The Public That Conflicts With The
`Decision Below
`The tremendous importance of the issues relating
`to copyright terminations raised in this case to the
`Amici and the public is illustrated by the guidance
`that the Copyright Office gives to copyright owners:
`“Where a grant was executed by one or more of the
`author’s heirs, the grant ca
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