limited as to time; that is, it doesn’t have to
cannot reproduce and distribute it or exercise be for the entire duration of the copyright.
any other of the copyright owners’ rights in
the work without obtaining their permission.
208 | THE COPYRIGHT HANDBOOK
EXAMPLE: Margaret grants Green Thumb
has received unless the license permits it
Publishing the exclusive right to publish
or the copyright owner agrees. ( Gardner v.
her book on gardening in the United States
Nike, Inc., 279 F.3d 774 (9th Circuit 2002);
for 20 years. The copyright in the book will
Cincom Sys. v. Novelis Corp. , 581 F.3d 431
last for the rest of Margaret’s life plus an
(6th Cir. 2009).)
additional 70 years. The transfer to Green
These cases have important ramifications
Thumb has no effect on this. When the 20
for copyright owners and publishers and
years are up, the transferred rights will revert
others to whom they grant exclusive licenses.
to Margaret or her heirs and will last for the
Unless the license agreement gives them
remainder of the copyright term.
the right to sublicense the work, licensees
may be prevented from ful y exploiting
the work they’ve licensed. For example, in
Rights Retained by Author
the Gardner v. Nike case cited above, Nike
After Transfer
granted an exclusive license to Sony Music
A copyright owner who transfers all or part Entertainment for a cartoon character named
of the bundle of exclusive rights still retains MC Teach. Sony had the exclusive right to some important rights.
use MC Teach in records, TV shows and
movies, clothing, and educational materials.
Sony then sublicensed to Gardner the right
Right to Sublicense Under
to use MC Teach on educational materials.
Exclusive Licenses
Nike sued, claiming Sony couldn’t sublicense
Whenever an author or other copyright
MC Teach without Nike’s permission. The
owner assigns his or her entire bundle
court agreed, because the license agreement
of copyright rights to another person or
did not specifical y permit such sublicensing.
company, that person may reassign the
So, Sony was prevented from sublicensing
copyright to someone else without the
MC Teach to Gardner unless Nike agreed.
original owner’s consent. However, this is not Nike was free to withhold such agreement or necessarily the case when an exclusive license to demand increased license fees to permit is involved, since an exclusive license only
the sublicensing.
transfers part of a copyright owner’s rights.
Here are some other scenarios where these
Two federal courts have held that
cases could wreak havoc on licensees’ plans:
a person or company that receives an
• A publisher obtains an exclusive
exclusive license from an author or other
license to publish a book in North
copyright owner may not sublicense—that
America. The author retains all other
is, transfer to someone else—the rights it
rights. The publishing agreement does
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 209
not specifically allow the publisher
Alternatively, the person seeking rights
to sublicense its rights in the book.
can acquire copyright ownership and avoid
The publisher couldn’t sign a license
using exclusive licenses. This can be done
permitting another publisher to
through an assignment or, in some cases,
produce a Spanish language edition for use of a work-made-for-hire agreement. (See
sale in North America or sell North
Chapter 7, “Initial Copyright Ownership.”)
American book club rights without the This is something more and more publishers,
author’s permission.
newspapers, magazines, and others are doing.
• An author obtains an exclusive license
If you would like a middle ground—
to use several photographs in his book.
where you have some say in sublicensing
He signs a license with the photographer but you won’t interfere in most sublicense
that says he may use the photos in al
agreements—you can soften the effect with
editions of the book, but says nothing
a clause in which you withhold consent for
about whether he can sublicense the
sublicenses only if you have a valid business
photos. When a magazine contacts him reason. What’s a valid reason? Perhaps the
to publish an excerpt from the book,
company to which your licensee wants
the author can’t authorize use of the
to grant an assignment has a reputation
photos in the book unless he obtains the for not paying royalties, or maybe it is in
photographer’s permission.
poor financial shape. You cannot, however,
• A website buys a series of articles from withhold consent for an arbitrary reason,
a freelance writer. It signs an exclusive
such as someone from the company once
license giving it the exclusive right
treated you rudely. Here’s an example:
to use the articles on the Internet.
Since the license says nothing about
[ Name of person or entity receiving license]
sublicensing, the website cannot license
may not sublicense the rights granted in
the articles for non-Internet uses—
this agreement without the prior written
for example, for publication in print
consent of Licensor. Such consent shall not
magazines or newspapers.
be unreasonably withheld.
One way to avoid these issues is to include
language in an exclusive license agreement
Many exclusive license agreements con-
permitting sublicensing. Here’s an example:
tain standard boilerplate language stating
that the agreement applies to the licensee’s
[ Name of person or entity receiving license]
“successors and assigns.” Whether this
may sublicense the rights granted in this
constitutes permission to sublicense is
agreement.
unclear and should not be relied upon.
210 | THE COPYRIGHT HANDBOOK
Nonexclusive Licensees Have
may be terminated. This is so whether
No Sublicensing Rights
the transfer is an assignment of the entire
bundle of copyright rights or an exclusive
Those who obtain nonexclusive licenses
or nonexclusive license of only certain
from copyright owners have no rights to
rights. A transfer of a copyright by will that
sublicense their rights without the copyright
occurs after an author dies is not subject to
owner’s permission. Unlike the Nike ruling
statutory termination.
involving exclusive licenses, above, this rule is
settled law throughout the United States.
Who can exercise the termination right?
>
This termination right may be exercised only
by the author of a work or, if the author is
If you’re an author or other copyright
dead when the time to terminate arrives,
owner who grants someone an exclusive
by the author’s widow or widower, children
license to use your work, you should decide (including illegitimate and adopted children), whether to give the licensee the right to
and grandchildren. If an author dies without
sublicense the work. This negotiation may
leaving a surviving spouse or children or
depend on your bargaining power, but
grandchildren, the termination right ceases
you have the legal right to refuse to grant
to exist. Note that an author cannot leave
such authority or to demand payment for
termination rights to others in a wil . When
sublicensing rights.
an author dies, his or her termination rights
automatical y pass on to a surviving spouse
Statutory Termination of
and children and grandchildren, if any. The
Transfers After 35 Years
provisions in an author’s will are irrelevant.
A potentially important right retained by
The owner of a work made for hire,
authors and their families is the statutory
whether an individual or a business entity
right to terminate transfers of copyright
such as a corporation, has no statutory
ownership made after December 31, 1977.
termination rights.
This includes the original grant of rights an
EXAMPLE 1: Sam writes a book in 2000
author gives to his or her publisher. These
and signs a publishing contract transferring
statutory termination rights can never be
his entire copyright to Scrivener & Sons
waived or contracted away.
that same year. The transfer may later
be terminated by Sam or certain family
What rights can be terminated?
members as described below.
Any transfer of copyright rights made by
a living author after December 31, 1977
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 211
EXAMPLE 2: Sue writes a book in 2000
What happens after a transfer is terminated?
and transfers her entire copyright to her
After a transfer is terminated, the termi-
boyfriend Bill by a will upon her death in
2001. This transfer may not be terminated
nated rights revert back to the author if he
by Sue’s surviving family.
or she is still alive. If the author is dead,
the rights are shared by the author’s widow
or widower, children, and grandchildren.
When can transfers be terminated?
However, the owners of any derivative works
A transfer of the right to publish (that is,
prepared from the work may continue to
reproduce and distribute) a work may be
distribute such works.
terminated any time during a five-year
EXAMPLE 1: Assume that it is the year 2020.
period beginning either 40 years after the
Kel y Stewart has terminated the publication
date of the transfer or 35 years after the date
rights grant she made to Scrivener & Sons
of first publication, whichever is earlier. A
in 1980. This means that Scrivener may not
transfer of any other rights (for example,
publish any more copies of Kel y’s novel
the right to adapt a work into a film) can
without her permission. Kel y may now resell
be terminated any time during a five-year
her novel’s publication rights to Scrivener or
period beginning 35 years after the transfer
any other publisher, or self-publish her novel
was made and ending 40 years afterwards.
if she so chooses.
EXAMPLE: Kel y Stewart signs a contract with
EXAMPLE 2: Assume that it is now the year
Scrivener & Sons on January 1, 1980 to write a
2025. Kel y has terminated the film rights
novel and grants Scrivener the exclusive right
transfer she made to Repulsive Pictures
to publish the book in the United States and
back in 1991. Kel y now owns the right
Canada. The novel, entitled The Voyeur, is not
to make any new films based upon her
published until January 1, 1990. On January
novel. However, Repulsive may continue to
1, 1991, Kel y sel s the film rights to her novel
distribute Front Window, a film it produced
to Repulsive Pictures. The publication rights
based on Kel y’s novel in 1994; it just can’t
transferred to Scrivener may be terminated by
make any new films from the novel without
Kel y or her heirs any time between January
Kelly’s permission.
1, 2020 and January 1, 2025, 40 to 45 years
after the publishing contract was signed.
What is the termination procedure?
This is earlier than 35 years after the date of
actual publication of the book. The film rights A written notice of termination complying transfer to Repulsive may be terminated
with the statutory requirements must be
between January 1, 2025 and January 1, 2031
sent to the owners of the rights being ter-
(35 to 40 years after the transfer was made).
minated and recorded with the Copyright
212 | THE COPYRIGHT HANDBOOK
Office. Although the termination won’t be
• a brief statement reasonably identifying
effective until 35 or 40 years after the trans-
the transfer to which the notice of
fer, you can serve the notice up to ten years
termination applies, and the effective
before that. That is:
date of termination, and
• For transfers including publication
• if the termination is made by the
rights, the notice of termination may
author’s heirs, a listing of their names
be served 25 years after publication or
and relationships to that deceased
30 years after the transfer was signed,
author.
whichever occurs first.
The notice must be served by personal
• For transfers not including publication service, or by first-class mail sent to
rights, the notice of termination may
an address which, after a reasonable
be served 25 years after the transfer
investigation, is found to be the last known
was signed.
address of the person whose rights are being
Thus, for example, during 2015, a notice terminated, or his or her heirs or successors.
of termination may be served to terminate
It is also advisable to record the notice with
a transfer not involving publication rights
the Copyright Office.
made during 1990.
The notice of termination may be written Filing Documents With
in the form of a letter, including all the
the Copyright Office
following information:
• a statement that the termination is
An author or other copyright owner retains
&n
bsp; made under 17 USC § 203
the right to file the following documents
• the name of each person whose rights
with the Copyright Office following a
are being terminated or that person’s
transfer of copyright rights.
successor in title, and each address at
which service of the notice is being
Supplemental registrations
made
Certain types of new information or changes
• the date the transfer being terminated
in the information supplied in the original
was made, and, if the grant covered
registration may be supplemented by the
the right of publication, the date of
author or another copyright owner according
publication
to the procedures discussed in Chapter 4,
• the title of the work and the name
“Correcting or Changing Copyright Notice
of the author(s) and, if possible and
or Registration,” even though the author or
practicable, the original copyright
another copyright owner no longer owns any
registration number
of the copyright rights.
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 213
Notice regarding contractual
Moral Rights
termination or revocation of transfer
In many European and other countries
A copyright owner who transfers ownership an author automatically retains certain
of copyright right(s) for a set term (for
additional rights in his or her work. These
example, ten years) has the right to notify
are called moral rights (or droits morals).
the Copyright Office when the term has
Moral rights are rights an author can never
expired so as to expressly reclaim ownership transfer to a third party, because they
on the record. Similarly, revocation is
are considered an extension of his or her
desirable when a transfer is revoked because being. Briefly, they consist of the right to the transferee did not abide by the terms
proper credit or attribution whenever the
of the license (for example, failed to sell
work is published, to disclaim authorship
a required number of copies) or for some
of unauthorized copies, to prevent or call
other reason.
back distribution under certain conditions,
An owner in this situation should send
and to object to any distortion, mutilation,
the Copyright Office a letter along the
or other modification of the author’s work
following lines and also have the letter
injurious to his or her reputation. The right
The Copyright Handbook Page 37