IP P®OSPE©TIVE

I recently authored an article (”Termination Rights: A Second Bite at the Apple“) that was published in the January 2009 issue of The Federal Lawyer regarding section 304(c) of U.S.C. Title 17. That section, which affords certain termination rights to authors of copyrighted works which were secured and granted prior to 1978, has garnered little attention until recently, mostly because of the small timeframe through which the rights can be exercised.

I wrote the article because of a string of recent cases (and more litigation soon to come) in which courts had allowed authors to terminate valuable, and famous, copyrights. One of them, of course, is the the Superman copyright - the Central District of California allowed the estate of Jerome Siegel to terminate a 1938 grant of copyright to DC Comics and retain those rights for the duration of the copyright’s life. (Siegel v. Warner Bros. Entertainment Inc., 542 F. Supp. 2d 1098 (C.D. Calif., 2008). The other case came out of the 9th Circuit, in which the estate of Eric Knight, who wrote the novel Lassie Come Home, was allowed to terminate a similar grant of rights. (Classic Media Inc., v. Mewborn, 08 C.D.O.S. 8813 (9th Cir. 2008).

At the time I wrote the article, I had come to the conclusion (through my own analysis, experience, and conversations) that these recent victories for authors would not spark a run on copyrights. My reasoning was sound; there is a narrow 5-year window (between the 56th and 61st year of the copyright) to exercise the rights, and numerous formalities included in the process. Nevertheless, after I submitted the article for publication, I attempted to speak with three (3) different record label in-house counsel friends of mine about the phenomenon. Somewhat surprisingly, but understandably, all three declined to comment, and quickly moved me to the next subject. This tells me that there might be more to the phenomenon than first thought.

The attorney in both the Siegel and Mewborn cases was Marc Toberoff, a true assassin of pre-1978 grants of copyrights. Some would say he is a heroic figure for the unassuming author/artist. True, before Toberoff came along, Siegel and his estate had only received a $130 payment in 1938 and modest voluntary payments since (out of pity). I have word from other LA attorneys that Toberoff isn’t stopping, and has other big-time copyrights in his sights. If a few savvy veterans (or their estates) jump on the bandwagon, we could see a few more battles in the district courts of California and New York. Thoughts?