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02/8/1999 |
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E. Scott Johnson Appeared in The National Law Journal Each year on Dec. 31, copyright protection expires on many well-known literary, artistic and musical works — but not this year. On Oct. 27, 1998, President Clinton signed the Sonny Bono Copyright Term Extension Act,(1) which halts for 20 years the flow of U.S. copyrighted works into the public domain. Composers, authors, publishers, entertainment industry companies and trade groups had lobbied hard for this legislation, which was renamed in honor of the late entertainer-turned-representative. The act applies to all works still in copyright as of this past Oct. 27, the law's effective date, but it does not revive copyright protection for works already in the public domain as of that date.(2) Songs expected to enter the public domain on Jan. 1, but "saved" by the new law included "Charleston," "Bugle Call Rag" and "Who's Sorry Now." Not rescued, however, were "Toot Toot Tootsie, Goodbye" and "Carolina in the Morning," which already had entered the public domain in 1998. This year, George and Ira Gershwin's "Fascinating Rhythm," George Gershwin's "Rhapsody in Blue" and Marty Bloom, Ernest Brever and Billy Rose's immortal "Does the Spearmint Lose Its Flavor on the Bedpost Over Night," were scheduled to lose copyright protection at midnight on Dec. 31. The new law, however, will preserve those copyrights for 20 additional years. International Harmony The Term Extension Act harmonizes U.S. law with European Union law, which had already adopted a basic copyright term of "life of the author plus 70 years." This extension of U.S. copyright helps owners to enforce their copyrights in foreign countries that follow the "rule of the shorter term" -- countries that provide the benefits of national treatment to U.S. copyright owners but deny copyright protection to works that are out of copyright in the home country, even if the foreign country's national laws would provide protection of longer duration. This act marks the fourth time the United States has extended the term of copyright protection. The earliest federal copyright law, the Copyright Act of 1790, provided a copyright term of 14 years from the date of publication of a work, renewable for another 14 years. The Copyright Act of 1831 provided an initial term of 28 years, which was renewable for 14 years. The 1909 Copyright Act, which still governs the term of protection for many works, provided an initial term of 28 years and a 28-year renewal term. This renewal term was extended to 47 years in the 1976 Copyright Act that added a 19-year "extended renewal term," resulting in a 75-year term of copyright protection for properly renewed pre-1978 works. In 1976, the Copyright Act was gain revised,(3) effective Jan. 1, 1978, to provide a copyright term for works created in or after 1978 based on the life of the author plus 50 years. In the case of two or more authors, copyright duration was measured by the life of the last surviving author plus 50 years. The Term Extension Act extends copyright protection for pre-1978 copyrighted works from 75 years to 95 years.(4) For later works, copyright protection now extends for the life of the last surviving author plus 70 years.(5) For works made for hire, the term of copyright is increased from 75 years from publication or 100 years from creation, whichever is shorter, to 95 years from publication or 120 years from creation.(6) During the 20-year extension period, nonprofit organizations and libraries will have special rights to copy and distribute works that otherwise would have been in the public domain, if such works are not commercially available.(7) Preserving Earnings Many pre-1978 works generate significant earnings for their owners, but the older a work becomes, the closer copyright "death" looms. Once copyright protection ends, works enter the public domain and may be copied distributed, performed, broadcast and transformed into new works - for example, The Walt Disney Co.'s animated films based on public-domain stories, such as "The Hunchback of Notre Dame" - without any legal obligation to negotiate permissions from or pay royalties to the original author or the author's successors in interest. The most immediate effective of the new law will be felt by individuals and companies that own catalogs of older, income-producing copyrighted works. Large companies that own such copyrights, such as Disney and Time Warner, were strong proponents of the legislation, even though they may, at times - note "The Hunchback of Notre Dame" - have benefitted from the adaptation of public-domain works. Disney's "Steamboat Willie" cartoon (which contained the first appearance of the character that was to become Mickey Mouse) and "Winnie the Pooh" are among the important Disney properties that were expected to lose at least some copyright protection in the coming years, and Time Warner's Warner-Chappel division - which owns many important copyrights, including those to George Gershwin's music - was also at risk of losing valuable copyrights in the next few years. It is true that, were it not for term extension, the 1928 copyright of "Steamboat Willie" would have expired in 2003, but one should not conclude that the loss of copyright in an early appearance of Mickey Mouse in a short cartoon - whenever it occurs - will thrust Mickey Mouse into the public domain. The Mickey Mouse image and name have trademark protection and are subjects of numerous trademark registrations applied to various products and services. The copyright protection that would be lost in the case of an early animated short such as "Steamboat Willie" would be in the particular cartoon episode, and not in the character as developed in later works or in later copyrighted cartoon features. Nevertheless, Disney understood the benefits of adapting well-known public-domain stories and characters, and it can be expected to resist any diminution of rights in its own creations.The new law enhances the copyright termination of transfer provisions found in the Copyright Act,(8) affording authors the first opportunity to obtain the benefit from extensions of the copyright term. The Copyright Act provides that an author, or his or her heirs, can terminate a grant of rights executed before Jan. 1, 1978, with respect to the "extended renewal term, i.e., the 19 years added to the 28-year renewal term.(9) Recaptured Term The termination right must be exercised within five years after the beginning of the 19-year extended renewal term, i.e., between the 57th and 61st year from commencement of the copyright term.(10) Under the Term Extension Act, authors or heirs(11) who exercise termination rights under § 304(c) will recapture the entire renewal term, both the 19-year extended renewal term and the extra 20 years added by the new law, for a total recapture of 39 years.(12) Because of the economic benefits to U.S. copyright interests - due in part to the operation of other countries "rule of the shorter term" - opposition to the legislation was underwhelming. Nevertheless, some 609 law professors signed a statement opposing term extension, arguing that copyright protection was already long enough to provide sufficient incentives for the creation of new works and that term extension would be contrary to the general public's interest in a "vibrant public domain" necessary to encourage new creations based on the free accessibility of out-of-copyright works.(13) Marc G. Gershwin, a nephew of George and Ira Gershwin and co-trustee of the Gershwin Family Trust, stated that economic incentives are important but are not the only considerations: "For instance, we've always licensed "Porgy & Bess" for the stage performance only with a black cast and chorus. That could be debased, or someone could turn "Porgy & Bess" into rap music."(14) However, critics of term extension believe that such re-uses benefit the public, and they noted Disney's reliance on public-domain materials to create its animated films. The law professors cited a newspaper report stating that the descendants of Victor Hugo in France were "profoundly shocked" at Disney's film adaptation of Hugh's classic "The Hunchback of Notre Dame," labeling merchandise items based on the film "scandalous and obscene."(15) The professors opposing term extension believed that the heirs of authors of old works should not be able to prevent such uses. Restaurants' Rally The legislation was not a complete victory for copyright owners. It was combined with a contested amendment to § 110 of the Copyright Act, exempting certain restaurant and bar owners and other small commercial establishments that play radios and televisions in public spaces from the obligation to obtain public-performance licenses from clearinghouses, such as the American Society of Composers, Authors & Publishers (ASCAP).(16) The term-extension legislation had been held up because of the lobbying efforts of restaurateurs and other small-business trade groups seeking exemptions from public-performance royalties. The politicians working for restaurateurs' interests tied the term-extension legislation to the passage of an exemption for small commercial establishments from the obligations to pay royalties for the public performance of music in certain circumstances. Under the compromise reached in the act, bars and restaurants of less than 3,750 square feet, and retail stores of less than 2,000 square feet, such as mall boutique shops, are exempt from paying royalties for playing music on the premises if certain other conditions are met.(17) Breath of Life While the creator of a 1978 or later work will never live to see the expiration of his or her copyright, whether 50 or 70 years after death, the heirs and assigns of creators of income-producing copyrights, such as the music of Irving Berlin and John Lennon, the artworks of Norman Rockwell and Andy Warhol and the literary creations of John Steinbeck and Ernest Hemingway, will realize an increase in the value of their copyrights. The added years will be considered in licensing, mortgaging, securitizing and myriad other transactions involving valuation of projected copyright earnings, including transactions consummated during the creator's lifetime. But for the owners of the copyright in "Bugle Call Rag," "Yes! We have No Bananas" and "Did You Ever Think as the Hearse Rolls By" (or "The Worms Crawl In, The Worms Crawl Out"), the new law is nothing less than a breath of life. 1. Sonny Bono Copyright Term Extension Act Fairness in Music Licensing Act of 1998. Pub. L. No. 105-298. 12 Stat. 2827. 2. See id. § 106. 3. Title 17 U.S.C. 90 Stat. 2541 et seq., Pub L 94-553. 4. 17 U.S.C. 307(a) and (b). 5. 17 U.S.C. 302(a). 6. 17 U.S.C. 302(c). 7. 17 U.S.C. 108(b). 8. 7 U.S.C. 304(c). 9. 7 U.S.C. 304(c). 10. 17 U.S.C. 304(c)(3). 11. The Term Extension Act also adds a new subsec. 203(a)(2)(D), which expands the categories of people who can claim the termination right, beyond "statutory heirs" named in the Copyright Act, to now include an author's "executor, administrator, personal representative or trustee." 12. For authors or their heirs who missed the five-year window for terminating a transfer of the extended renewal term, the Term Extension Act provides another opportunity at the end of the 75th year of copyright to recapture the extra 20 years. Rights can be reclaimed upon exercising the termination right at anytime during a period of five years beginning at the end of 75 years from the date copyright was originally secured. 17 U.S.C. 304(d)(2). 13. See Statement of Copyright and intellectual Property Law Professors in opposition to H. 604, H.R. 2589 and S. 550, submitted to the Judiciary Committees on the Judiciary, U.S. Senate, U.S. House of Representatives. 14. Dinitia Smith, "Immortal Words, Immortal Royalties? Even Mickey Mouse Joins the Fray." N.Y.Times, March 28, 1998, at A13. 15. "Clan of Victor Hugh Denounce Disney Film," Chicago Tribune, March 11, 1997, § 1, at 2. 16. Sonny Bono Copyright Term Extension Act Fairness in Music Licensing Act of 1998, Pub. L. No. 105-298 § 112 Stat. 2827. 17. Id., § 202 (amending 17 U.S.C. 110). |
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Ober, Kaler, Grimes & Shriver Maryland
Washington, D.C. Virginia
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