Sixth Circuit Grapples with Vesting of Copyright Renewal Rights

It seemed like a touch of hyperbole when William Patry recently labeled the Sixth Circuit “the most prolific court of appeals in copyright cases.” But the court’s decision today in Roger Miller Music, Inc. v. Sony/ATV Publishing, LLC provides further supporting evidence. In Roger Miller Music, the court is wrestling with the issue of when renewal rights in pre-1978 copyrights vest, which happens to be an issue we are about to cover in my Copyright class this semester, so the court’s timing is fortuitous.

The familiar general rule is that, for works of an individual author copyrighted starting in 1978, the copyright lasts for the life of the author plus 70 years. (That was the rule the Supreme Court upheld in Eldred v. Ashcroft, a controversial case doubtless well known to Info/Law aficionados.) For works copyrighted before 1978, however, Congress has preserved the two-term copyright framework that existed under the 1909 Copyright Act. Under that framework, copyright subsists for an initial term of 28 years, but can be renewed for a second term. That second term has been continually lengthened by Congress, from 28 years (in the 1909 Act) to 47 years (in the Copyright Act of 1976) to, most recently, 67 years (in the Sonny Bono Copyright Term Extension Act of 1998). (My attempt to summarize the rules on copyright duration in the form of a single-page flowchart is available here).

Like any other form of property, copyright rights can be conveyed or assigned to third parties, in whole or in part, in either the first or renewal term. However — and here is where it gets tricky — an assignment made during the first term but covering renewal term rights lapses if the author dies before the renewal rights vest. If that happens, the assignee may be surprised to discover that they no longer own the assigned rights during the renewal term. Those rights revert, instead, to the author’s surviving family (or to the estate of the deceased author, pursuant to a fairly straightforward statutory succession scheme).

That’s what happened in the Supreme Court case of Stewart v. Abend, long a fixture of copyright casebooks. Famed director Alfred Hitchcock bought the movie rights to author Cornell Woolrich’s short story, “It Had to Be Murder,” and made it into a movie, Rear Window. Woolrich’s short story was copyrighted in 1942, meaning the 28-year initial term of the copyright lasted until 1970. Woolrich, however, didn’t live that long — he died in 1968, and the renewal term rights to “It Had to Be Murder” reverted to his estate. The Supreme Court held that this meant Hitchcock’s successors had to negotiate a new license from Woolrich’s successors covering the renewal term, and if they didn’t, they were infringing Woolrich’s copyright in “It Had to Be Murder” every time they showed the movie Rear Window. If Woolrich had survived a little longer, his renewal term rights would have vested, and the assignment of those rights to Hitchcock would have been valid. But because he didn’t, they didn’t, and Hitchcock’s successors had nothing.

Roger Miller Music deals with one of the questions that students of copyright find especially vexing (as if the foregoing wasn’t vexing enough): just how long must the author survive in order for the renewal term rights to vest? The pertinent facts of Roger Miller Music look like they could be drawn from a law school final exam hypothetical: work copyrighted 1964, so first copyright term lasts until the end of 1992. Author concludes a series of agreements with Publisher assigning rights in the work, the last in 1991. Author dies October 25, 1992. Publisher filed a copyright renewal in Author’s name. The renewal term commenced January 1, 1993. Question: who has the renewal term rights, the Publisher or the Author’s statutory successors? Or, to put it differently, did the Author live long enough for the renewal rights to vest? My best guess after the break.

It certainly looks from the court’s opinion as if the Publisher might have blown it here. That’s no reflection on the caliber of Sony’s counsel; the renewal provisions of the Copyright Act rival anything in the Tax Code for sheer linguistic impenetrability. Before the district court, the publisher apparently conceded that they didn’t own the renewal rights because the author didn’t live until January 1, 1993 — the first day of the renewal term.

Somewhere along the way, however, Sony apparently got better advice, and the appeal is all about whether Sony can disavow its earlier concession in favor of the correct answer, which it apparently sought to present via a postjudgment motion to the district court: to wit, the renewal rights vest in the Publisher as long as the Author is alive at the time a renewal application is filed, which can be done any time during the final year of the initial copyright term (here, 1992). That, I think, is the significance of the clause in Section 304(a)(2)(B) of the Copyright Act, which specifies that renewal term rights “shall vest … in any person who is entitled … to the renewal and extension of the copyright at the time the application is made” (emphasis mine). So if Author is alive when the renewal application is filed (whether by Author, or by Publisher in Author’s name), Author’s renewal rights vest and the Publisher takes them pursuant to the terms of the initial assignment. On the other hand, if Author has died, then Author (and Publisher) no longer qualify as a “person who is entitled to the renewal and extension of the copyright,” and the renewal rights vest in the author’s family or statutory heirs (who can file a renewal application if they wish).

The court’s opinion in Roger Miller Music is a little odd, partly because of the unusual procedural posture in which the case came up. Sony is trying to disavow its concession in the district court that it lost the renewal rights in the 1964 compositions, and the focus of the court’s opinion is on whether Sony can even argue the correct version of the law to the district court, or whether it must live with its error. Somewhat unusually, I think, the panel doesn’t actually spell out what is the correct vesting date of the renewal rights, a legal issue on which the Court of Appeals seems adequately situated to opine, but just leaves that to the district court to resolve on remand (after concluding that Sony isn’t barred by its erroneous concession from seeking application of the correct vesting date). It’s also a little strange to see the panel engaging in a lengthy discussion of how a first-term assignment of renewal rights lapses if it doesn’t vest before the renewal term begins without citing Stewart v. Abend, but they instead stitch together a list of pre-Stewart Supreme Court cases, and some more recent Circuit precedent, for basically the same proposition. I don’t think they’ve actually committed an error on this particular point, but it’s not necessary to reach all the way back to the Miller Music case from 1960, as the panel does, for support on the vesting issue.

UPDATE #1: I’ve added the text of the court’s opinion to Wikisource.

UPDATE #2:  William Patry has written a great post about the case on his Copyright Blog, with a persuasive and informative overview of how the case law and statutory history play into this issue.

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