Wednesday, May 24, 2023

Memoir Writing and Copyright

Memoir Writing: Protecting Your Rights and Avoiding Legal Pitfalls

Collaboration or ghostwriter agreements must be documented in writing to suit each unique situation. Anticipating various issues, such as deadlines, copyright ownership, confidentiality, compensation, and termination for cause, is crucial for fostering a productive and harmonious collaboration.

A surprise to many is that the timing of when the agreement is signed also impacts copyright ownership. If the agreement isn't formalized before the writing process begins, complications regarding copyright ownership may arise. In such cases, a writer could claim that they retain ownership of their contributions, potentially leading to legal conflicts. By establishing clear terms and conditions upfront, both parties can circumvent such issues and lay the groundwork for a seamless collaboration.

Joint Authorship and Copyright Ownership

If you look at The New York Times nonfiction bestseller list, you will discover that most of the books were written by someone other than the person whose name appears on the cover.  If you wish to hire a writer, it's crucial to explicitly state in writing that the their contribution will be classified as a work for hire. Under a work for hire arrangement, the hiring party is recognized as the sole author and owner of the work. This ensures clarity regarding copyright ownership and protects the hiring party's interests in the project.

The Copyright Act lists two types of work for hire:

(1) work created by an employee within the scope of their employment; and 

(2) works specifically commissioned and governed by an explicit agreement stating the work is considered a work for hire.  

Without a written agreement, there's a rebuttable presumption that the work is a jointly authored work. The legal implications of that are joint ownership of the copyright, regardless of how much the authors contributed to the work. Each author also has the non-exclusive right to license the work, subject to a duty to account to the other. The joint author presumption can be overridden through a contract. Without a clear agreement, however, decision-making conflicts may arise, hindering the sale or licensing of exclusive rights.

To establish joint authorship, the key requirement is the intention to merge individual contributions into an integrated whole. For this reason, it’s important to stress how the work is registered with the U.S. Copyright Office. This is because the facts stated in the copyright application, specifically, whether you list one name as the author, or check the “work for hire” box on the application, will be given the presumption of truth when searching for the creators’ intent. As for editors, while they may contribute copyrightable expression, book editors at publishing houses are generally not regarded as co-authors.

The Pen (Contract) Is Mightier Than the Sword (Lawsuit)

To ensure you own the copyright you must have a written agreement that includes the phrase "the work shall be considered a work made for hire.” Because the work for hire doctrine applies to a narrow group of works, and not all courts recognize work for hire agreements signed after a work is created, to ensure legal validity, it's recommended to include a backup copyright assignment in all writer for hire agreements.

It's also important to lay out what the writer is allowed to disclose and the scope of the assignment. Will the book be a confessional, or the writer's job to put the best face on the subject without resorting to blatant deception? How many words? The average word count for a general interest nonfiction book clocks in between 50,000 to 60,000 words.

Compensation is typically structured as progress payments linked to satisfactory and timely delivery. The inclusion of royalties alongside the fee is subject to negotiation. Generally, a portion of the fee is paid upon signing, necessitating the establishment of milestones to trigger further payments. 

If the book is sold to a traditional publisher on the basis of a proposal, additional payments to the writer (and subject) will be tied to the publisher's payout of the advance. Typically, advance payments are paid in anywhere from two to four installments, i.e., (i) when you sign the contract, (ii) upon delivery and acceptance of the manuscript by the publishing house, (iii) when the book is published, and (iv) sometimes, a fourth and final payout when the paperback edition of the hardcover is published. 

A ghostwriter agreement should cover the financial implications if one party withdraws from the project prematurely. If the subject decides to back out (provided both writer and subject are parties to the publishing agreement), specifying in the agreement that the writer isn't obligated to repay their portion of the advance can help alleviate the impact of a failed collaboration.

From a ghostwriter's perspective, it's important to have the subject promise that they will provide access to pertinent documents (e.g., diaries or memorabilia, or business papers), and use their best efforts to provide access to the subject's inner circle.

Whether you are the subject of the book, or the writer, it's reassuring to be named as an additional insured on a publisher's media perils policy. While most major publishers carry media perils insurance, many smaller publishers do not. Bear in mind that the additional insured's coverage is subject to the policy's deductibles and limits.

Confidentiality clauses protect information exchanged between two individuals. Whether the information gained working on a book concerns family or business matters, a well-drafted confidentiality clause can deter the writer from using that information against the subject for their personal gain. 

Below is a sample confidentiality clause from an unsigned collaboration agreement between Fay Vincent Jr. (the former commissioner of baseball) and writer David Kaplan for Vincent's never-published memoir. According to Kaplan, "Vincent sat for interviews, told stories, and made a few editing changes" to the manuscript. At some point, the former baseball commissioner got cold feet and terminated his $300,000 publishing contract with Little Brown & Company - of which Kaplan was to receive a 40% share. Kaplan then sued Vincent for control of the manuscript. It did not end well for the writer. The unsigned collaboration agreement was deemed unenforceable, and the court refused to decide the joint authorship issue on a motion for summary judgment.

"All material whether oral or written contributed by either party for use in the manuscript, including materials and information provided prior to the execution hereof, shall be considered confidential, and neither party shall use any of such material or the facts or the information contained therein that have been provided with the parties' collaboration except as permitted hereunder or under an agreement with a third party to which both parties have previously agreed in writing, without the express prior written approval of the other party. In no event shall any confidential material otherwise be used by the party that has not furnished the same in the event there is any termination of the agreement. Specifically, Kaplan agrees not to participate in interviews, write any articles or books, or take any actions in or by which he discloses in any manner any of the unpublished information furnished to him hereunder, or any portion thereof, in connection with the work which is not publicly available or independently discovered by Kaplan, including any non-public aspect of the relationship of the parties involved in the preparation or the writing of the Work and/or its adaptation for use in any media whatsoever ...."
A well-drafted agreement might include a non-disparagement clause. This is particularly important if you are a public figure or represent a public figure.
"You agree that you will not (nor will you cause or cooperate with others to) publicly criticize, ridicule, disparage or defame Subject, his family, his business associates, company, directors, officers, shareholders, employees, agents, or attorneys, with or through any written or oral statement or image, whether or not they are made anonymously or through the use of a pseudonym."

What You Need to Know to Avoid Being Sued for Defamation & Invasion of Privacy

In the United States, while the truth is a complete defense, accuracy does not necessarily trump a person’s right to privacy, or a promise not to reveal certain information. Therefore, both parties should take steps to ensure the factual accuracy of the manuscript. If you are a professional writer, the subject should be required to read and fact-check the manuscript to ensure accuracy. Since verifiable truth is a complete defense to a defamation claim, the ghostwriting agreement should require the parties to retain copies of all recorded interviews, transcripts, books, notes, letters, and other research materials used to prepare the book. See, §9.12.1, The Copyright Permission and Libel Handbook by Lloyd J. Jassin & Stephen C. Schechter (John Wiley & Sons).

It's important to note that under U.S. libel law, the dead cannot sue for libel. While the publication of truthful information is generally considered a full defense to libel, private individuals can sue for the publication of highly offensive or embarrassing truths. So, if your book goes too far and reveals intimate areas of a person’s life - e.g., sexual behavior, family life, medical procedures, mental (in)capacity – you may be inviting a right of privacy claim. Are there defenses? The First Amendment may shield the disclosure of private facts if there is a legitimate public interest served by the disclosure.   

The right of publicity involves the unauthorized use of a person’s name, image, or likeness to sell or advertise products, merchandise, goods, or services. It is related to the right to privacy. Fortunately for memoirists, due to free speech considerations, courts historically construe publicity rights narrowly.

If you feel uncomfortable with the legal minefield of libel, right of privacy, and right of publicity law, consult a publishing attorney.  A publishing attorney can evaluate or vet your manuscript and suggest ways to reduce the risks of writing about real people and actual events. 

DISCLAIMER: THIS ARTICLE DISCUSSES GENERAL LEGAL ISSUES OF INTEREST AND IS NOT DESIGNED TO GIVE ANY SPECIFIC LEGAL ADVICE CONCERNING ANY SPECIFIC CIRCUMSTANCES. PROFESSIONAL LEGAL ADVICE MUST BE OBTAINED BEFORE ACTING UPON ANY OF THE ADVICE CONTAINED IN THIS ARTICLE.

ABOUT LLOYD J. JASSIN

Mr. Jassin possesses a unique set of professional credentials. In addition to being a nationally recognized book publishing attorney, he was the director of publicity for a division of Simon & Schuster. He helps authors, agents, and publishers avoid contractual traps and negotiate win-win deals. He will let you know if a contract is viable and what it will take to make it signable. He's available to answer questions about book contracts, film options, copyright, merchandise licensing, publicity, and privacy rights, and provide libel reviews of unpublished manuscripts. Whether choosing a title for a new book series, or the name of a book publisher, podcast, or blog, he can help you avoid trademark infringement by doing a trademark clearance search and registering your mark. After law school, he worked for Viacom Enterprises, the world's largest distributor of feature films and off-network television programming. Before founding his firm, he was a trademark associate at Cowan, Liebowitz & Latman, an internationally respected intellectual property boutique. He's the co-author of The Copyright Permission and Libel Handbook (John Wiley & Sons). He's been quoted in Publishers Weekly, The New York Times, Forbes, Fortune, and other publications, and taken the stage at BookExpo and spoken at Book Industry Study Group events. He's a former adjunct professor at the NYU Center for Publishing. Mr. Jassin graduated from Benjamin N. Cardozo School of Law and is admitted to practice in New York and New Jersey. Location: 1501 Broadway, 12th FL, New York, NY 10036, 212.354.4444. Email:  jassin@copylaw.com.

Friday, December 23, 2022

Collaborating with Other Writers: Why You Should Have a Collaboration Agreement

 


 

"I can never understand how two men can write a book together;

to me, that's like three people getting together to have a baby."

  -- Evelyn Waugh (novelist, Brideshead Revisited)


We have all heard the statistic; almost fifty percent of marriages in the United States will end in divorce. The odds are no better with literary partnerships than with romantic ones. Pity the person who collaborates with another writer or who hires a ghostwriter without fully discussing their expectations. A clear and understandable collaboration agreement is an effective, and relatively painless, way to reduce the potential f
inancial, emotional, and practical challenges ahead. And the best time to draft a collaboration agreement is during the romance stage of the relationship - before your start collaborating.  

What Is a Book Collaboration Agreement?

A collaboration agreement defines the parties' goals and sets boundaries, including who owns and controls the intellectual property rights. By addressing key points such as copyright ownership compensation, creative control, credit, and how to handle disputes each party knows what to expect of the other. How you address these issues depends largely on your position (hiring party or joint author), industry custom, and, if you are represented by an attorney, their guidance in reaching a viable and sign-able agreement.   

Joint Authorship and Copyright Ownership 

Generally, in the absence of a written agreement, when two or more people collaborate, each is considered the “author” and the owner of the copyright.  The exception to this rule is "work for hire," which is a "specially ordered" or "commissioned" work that requires a written agreement.  

The Copyright Act defines a joint work as “prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” The key requirement “is the intention, at the time the writing is done, that the parts be absorbed or combined into an integrated unit.”  Although they may contribute copyrightable expression, it would not be plausible to consider a book editor at a publishing house as a co-author. 

When a joint work is formed, either party may publish the work without the other's permission. Equal ownership under the Copyright Act also presumes that each writer receives 50% of the profits. Judges do not apportion a larger or smaller share based on the collaborators' contributions, experience, reputation, or seniority. Fortunately, the default rules imposed by the Copyright Act may be overridden by contract.  

Decision-making problems may arise if there are multiple offers for the work or requests for exclusive rights and no written agreement exists. If there is no written agreement, or the agreement fails to address the issue, an uncooperative co-author (or a deceased co-author's estate) can prevent the sale or license of exclusive rights. 

Things to Consider When Hiring a Memoir Writer

An equal sharing of rights should be reserved for relationships where both the writer and subject truly intend to be joint authors. A "work for hire" is probably what many people would have contemplated had they thought about it when hiring a ghostwriter or independent contractor. With a work-for-hire, the commissioning or hiring party, not the writer, is considered the author and owner of one hundred percent of the work. 

A formal ghostwriter agreement it should contain the legal phraseology, "the parties expressly agree that the work shall be considered a work made for hire." After-the-fact attempts to classify a work as a work for hire are not recognized in all states. For this reason, it's considered best practice to include a backup copyright assignment in work for hire agreements.  

What other terms should go into a ghostwriter agreement? It's important to lay out what the writer is allowed to disclose.  Is their job to put the best face on the subject of the story without resorting to blatant deception? How many words? The average word count for a general interest nonfiction book clocks in between 50,000 to 60,000 words. 

Compensation is generally paid as progress payments tied to satisfactory (and timely) delivery.  Generally, a portion of the writer's fee is paid on signing a ghostwriter or collaboration agreement. So,  you will need to establish milestones and deadlines, whether for the proposal or the final manuscript.

If a book proposal is contemplated (discussed below), further payment will be due on delivery of an acceptable book proposal. If the book is sold to a publisher, further payments will be tied to the advance payments. The agreement should address the financial consequences of one of the parties walking away from the project before completion. If the subject gets cold feet and pulls out (assuming both writer and subject are parties to a third-party publishing agreement), stipulating in the agreement that the writer does not have to repay their portion of the advance will take some of the sting out of a failed collaboration.

Are you sharing money on a percentage fee basis?  If so, you must agree on dividing monies from the sale or license of book and other rights (e.g., film, television, live stage).  Generally, the share of money a ghost or collaborator receives from the sale or license of book rights will look different than the percentage of monies they receive from selling the subject's life story rights to a film studio.    

The Elements of the Deal


Responsibilities. Be specific. What must be delivered?  What is the delivery date?  When you engage a writer to help you write a nonfiction book, generally, the writer will prepare a book proposal before completing the manuscript.  A book proposal is a detailed overview of the book, it contains the author’s credentials and information about how the book can be marketed, plus one or two sample chapters.  A book proposal is your bait if you are fishing for a publisher. A nonfiction book proposal is usually written with the understanding that substantive work on the actual manuscript will not begin until there is an offer from a publisher.

With a work by joint authors, if one party is more knowledgeable in publishing matters, you may designate that person as the point person to negotiate with agents and publishers. The less knowledgable party may predicate their approval on the contract on receiving some minimnally acceptable terms. 

Compensation. 
In traditional publishing, authors receive an advance against future royatlies. An advance is a sum paid out in two or three installments, generally, one-half on signing, and one-half on delivery and  acceptance of the complete manuscript. An advance is a loan against the book's future earnings. Once that money has been recouped from book sales, the author who deferred can start getting paid. Deferring payment is sometimes a way for the commissioning party to obtain the services of a more experienced writer without having to pay a large amount of money.  If you are sharing money you receive on a percentage basis, it's important to agree on the percentage fee for different rights, for example, film and television versus book related rights.  

Author Credit. By some estimates, up to 70% of nonfiction books are ghostwritten. For example, it is widely believed that Theodore Sorenson wrote John F. Kennedy's Pulitzer Prize-winning book, "Profiles in Courage,” for which JFK took both the prize and sole credit.  Clearly, a talented writer, who knows the ins and outs of publishing, can take an idea, sculpt a book proposal, and turn that into a publishable manuscript. 

Writing credits take various forms.  The most common writing credits are: "by Subject and Writer," or "Subject with Writer," or "as told to Writer." By definition, if the book is ghostwritten, sole authorship credit for the work will be in the subject’s name only. In that case, the writer-for-hire must make peace that the subject will receive sole authorship credit. Some might argue that ghostwriters should receive higher fees because their names don’t appear on the book jacket. The order and prominence of the names on the cover and title page should also be discussed and agreed to in writing.

Copyright Ownership. In the event of a creative divorce, except in the case of a true work for hire, it may be possible to separate out each author's discrete contribution and transfer those rights to the original contributor. One permutation of this is, "the copyright ownership of the material provided by each party shall revert to and revest in the contributing party with the result that neither party shall be permitted to use the materials contributed by the other without such others written permission."  

Death & Disability. In case of either party's death, disability, or an intractable disagreement, the agreement should have rules for hiring a person to complete the manuscript. If the party who commissioned the work is deceased, or disabled, then their literary executor, or estate representative, may assume that role. If the book will be revised and updated, for example, a textbook, the agreement should include a provision allowing the non-departing author(s) to revise the work and reduce the compensation paid to the departing author or their heirs. The agreement should also specify whether the person hired to complete the work, or undertake the revision, can receive credit as an author.   

Business & Creative Decision-Making. In the case of a joint work, control of business affairs (i.e., who is responsible for seeking offers and approving contracts) and editorial matters (i.e., who has the authority to approve the manuscript) are central issues.  Unanimity may be required for certain decisions (e.g., approval of the initial publishing contract).  If one party retains approval rights over the manuscript, the contract should require that party to notify the other party within X days after delivery if the manuscript is acceptable.  If not acceptable, they should provide written comments, or recommendations, on what improvements are needed to make the manuscript acceptable.  Requiring the party with approval rights to provide detailed editorial reasons within X days after delivery, is a bulwark against termination of a writer for mere convenience. 

Representations & Warranties From a ghostwriter, or "as told to" writer's perspective, it's important to have the subject promise that they will: (i) provide access to pertinent documents (e.g., diaries or memorabilia or business papers); (ii) provide reasonable access to themselves; (iii) use their best efforts to provide the writer with access to other individuals as may be needed to write or finish the book; and (iv) cooperate in good faith with the writer in pursuing a publishing deal.  Special attention should also be paid to the indemnity clause.  An indemnity is a promise to reimburse the other party should they breach their warranties.  

The contract should contain representations that certain facts are true on signing and will remain so throughout the life of the agreement.  Typically, the representations include,  (i) there are  no contractual commitments that will interfere with the ability to perform their obligations; (ii) that their contributions are original and will not violate any copyrights, proprietary rights, or rights of privacy, publicity, or constitute a libel against, or violate any other common law rights or other rights of any person or entity. If the writer-for-hire relies on material provided by the person who hired them, that material should be excluded from the writer's representations and warranties. 

Whether you are the author or a writer-for-hire, it's reassuring to be named as an additional insured on a publisher's media perils policy. While the big five publishers all have media perils policies, smaller publishers may not.    

Confidentiality & Non-Disparagement Clauses. Confidentiality clauses protect information exchanged between two individuals. Whether the information gained working on a book concerns family or business matters, a well-drafted confidentiality clause can deter someone from using that information against the discloser for personal gain.   

Here's a sample confidentiality clause from an unsigned collaboration agreement between Fay Vincent Jr. (the former commissioner of baseball) and writer David Kaplan. Back story. The two were to receive an advance of $300,000 for Vincent's tell-all memoir, split 60/40, with half payable on signing. According to Kaplan, "Vincent sat for interviews, told stories and made a few editing changes." At some point, the former baseball commissioner got cold feet, and terminated his publishing contract with Little Brown & Company. Kaplan then sued Vincent for control of the manuscript. It did not end well for Kaplan. The unsigned collaboration agreement was deemed unenforceable, and, the court refused to decide the joint authorship issue on a motion for summary judgement.

"All material whether oral or written contributed by either party for use in the manuscript, including materials and information provided prior to the execution hereof, shall be considered confidential, and neither party shall use any of such material or the facts or the information contained therein that have been provided with the parties' collaboration except as permitted hereunder or under an agreement with a third party to which both parties have previously agreed in writing, without the express prior written approval of the other party. In no event shall any confidential material otherwise be used by the party that has not furnished the same in the event there is any termination of the agreement. Specifically, Kaplan agrees not to participate in interviews, write any articles or books, or take any actions in or by which he discloses in any manner any of the unpublished information furnished to him hereunder, or any portion thereof, in connection with the work which is not publicly available or independently discovered by Kaplan, including any non-public aspect of the relationship of the parties involved in the preparation or the writing of the Work and/or its adaptation for use in any media whatsoever ...."

An effective contract might also include a non-disparagement clause.   This is particularly important if you are a public figure or represent a public figure.  

"You agree that you will not (nor will you cause or cooperate with others to) publicly criticize, ridicule, disparage or defame Subject, his family, his business associates, company, directors, officers, shareholders, employees, agents, or attorneys, with or through any written or oral statement or image, whether or not they are made anonymously or through the use of a pseudonym."

Ironically, we would not have access to Vincent's attorney's confidentiality and non-disparagement clauses but for the litigation. 

Conclusion

The time to address these issues is before the actual creative process begins. Although collaborators might feel uncomfortable discussing long-term financial and other issues, an effective agreement deals with these matters upfront rather than after the brickbats start flying.       

###
 

Disclaimer: This article, parts of which were previously published, discusses general legal issues of interest and is not designed to give any specific legal advice concerning any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the advice contained in this article.

About Lloyd J. Jassin.  I'm a book publishing attorney. I help authors, agents, and publishers avoid contractual traps for the unwary and negotiate win-win deals. I will let you know if a contract is viable and what it will take to make it signable. I'm available to answer questions about book contracts, film options, copyright, and privacy and provide libel reviews of unpublished manuscripts. Whether choosing a title for a new book series, or the name of a book publisher, podcast, or blog, I can help you avoid trademark infringement by doing a trademark clearance search and registering your mark. Before becoming a lawyer, I had a successful career in book publishing, working for Simon & Schuster. After law school, I worked for Viacom Enterprises, the world's largest distributor of feature films and off-network television programming. Before founding my firm, I was a trademark associate at Cowan, Liebowitz & Latman. I'm the co-author of The Copyright Permission and Libel Handbook. I've been quoted in Publishers Weekly and The New York Times, taken the stage at BookExpo, and spoken at Book Industry Study Group events. I'm a former adjunct at the NYU Center for Publishing. I graduated from Benjamin N. Cardozo School of Law. I'm admitted to practice in New York and New Jersey. Location: 1501 Broadway, 12th FL, New York, NY 10036, 212.354.4444. Email:  jassin@copylaw.org. Offices in NYC and Madison, N.J.


Friday, June 17, 2022

Copyright Recapture: How to (Legally) Terminate Your Book Contract

Copyright Termination, Reclaim Your Copyright
1941 Superman "Breaking Chains" Trademark
OpenAI. (2023). ChatGPT [Large language model]. https://chat.openai.com
One of the most important rights that authors and their heirs hold is the ability to terminate book publishing contracts. To start this process, it's crucial to examine the details of your publishing agreement.  

First, look for contractual provisions that might allow you to end the contract, such as the publisher not properly reporting sales or failing to keep your book available for sale. If you don't find a clear reason in your contract for ending it, don't worry. Even when the contract doesn't provide a straightforward path to termination, authors have a lesser-known but powerful option under the U.S. Copyright Act. Regardless of any agreements to the contrary, it's crucial to recognize that the right to terminate holds greater authority than the terms outlined in the agreement.

Copyright Termination Rights Explained
 
To protect authors of older works from having to live with bad "life of copyright" grants, Section 203 of the Copyright Act allows authors and other creators to terminate a grant of rights, notwithstanding any agreement to the contrary.  What this means is the termination right trumps what's written in the agreement.

The principles outlined here also work for film and television options, as well as other copyright assignments, grants and licenses. 

Provided the notice complies with the Copyright Office's rigid requirements and is timely filed, the termination will take effect "no earlier than 40 years after the execution of the grant or 35 years after publication under the grant (whichever comes first)." When a work is eligible for termination is best determined by a copyright attorney.
"Don't forget that the termination right trumps what's written in the agreement."
  🔺Heirs should be aware that Section 203 only applies to grants made by authors and does not encompass grants or re-grants made by the heirs themselves. If you are an heir, be cautious, as publishers may try to convince you to surrender your rights for little money through re-grant requests, effectively negating termination rights.

Works for hire are immune to statutory termination, which is why you should be wary of signing a work for hire agreement. The 
concept of work for hire is complicated. Therefore, just because a contract says it is work for hire or created in the course of employment does not make it so. For clarification, contract a copyright attorney. 
 
While the termination right does not apply to foreign grants of rights, many countries have their own termination statutes. For example, in Canada, 25 years after the death of an author, rights automatically revert to the author's estate. Here is a link to an excellent article by Professor Rebecca Giblin concerning reversion rights outside the U.S.

Termination Notices Are Challenging to Draft

If you wish to terminate a rights agreement careful implementation is required. You must (a) 
carefully calculate the termination date; (b) draft the notice of termination; (c) sign it; (d) serve it; and (e) submit the documents for recordation (with the recordation fee) electronically through the Copyright Office’s online system. The documents will then be scrutinized by the Copyright Office and rejected if they do not comply in both content and form. 

In other words, the process of reclaiming copyright is not automatic. In the context of joint works, a termination notice requires the signatures of the a majority of the co-authors. The Copyright Act gives the termination rights holder the option, but not the obligation, to reclaim their copyrights. Consequently, the majority of

termination rights expire without being exercised.

  
It is the author's responsibility to calculate the termination date. It can be anytime during a five-year window beginning the earlier of (a) thirty-five years from the date of first publication or (b) forty years from the date of execution. A notice of termination may be served ten years before the effective termination date or as late as two years before. A missed deadline or improperly drafted notice is a fatal mistake.

Example: Andrea signed a contract for her first novel on September 26, 1989. The book was published on September 26, 1992. The termination window is from September 26, 2024, to September 26, 2029. The earliest Andrea (or her surviving family members) may serve the notice of termination is September 26, 2014, ten years before the earliest possible termination date. The latest Andrea (or her surviving family members) may serve notice is September 2027, two years before the latest possible termination date.

Andrea must serve the notice on her publisher or publisher's successor, fill out the appropriate paperwork, and record the notice of termination with the Copyright Office. This public record becomes part of the work's chain of title, establishing legal ownership. Andrea's name and termination notice would appear in the title chain if anyone were to review the Copyright Office's database.

Derivative Works Exception

Within the framework of copyright law's "derivative works exception," a derivative work created before termination retains the right to be utilized according to the terms of the license agreement. To illustrate, a film adaptation of Andrea's novel can still be streamed after termination, with the stipulation that the studio is obligated to report to Andrea. However, it is important to note that the studio is restricted from generating new derivative works falling under the terminated grant of rights.

Terminating Pre-1978 Works

For works published before January 1, 1978, the maximum term of protection for certain works was 56 years. Over time, Congress increased the term of copyright protection from 56 to 75 years. In 1998 Congress increased the term again by 20 years for a total of 95 years. Congress also created a new right of termination for pre-1978 grants, licenses, and assignments. 
 
For these older works, the Act provides a five-year termination window beginning 56 years after a work was first published or registered for copyright. To terminate, the author, or their surviving spouse and children, must serve and record the termination notice within the time limits specified by the Copyright Act. If not terminated, the agreement will continue for the duration of the agreement. Unlike post-1977 grants, licenses, and assignments, pre-1978 grants, licenses, and assignments made by an author's widow, children, and other statutory beneficiaries, are terminable.

Case & Comment. In 1938 Jerry Siegel and Joe Schuster, two young men from Cleveland, Ohio, signed over all of their rights to the Superman character to DC Comics for $130.00 and vague promises of future work. To address this and similar economic injustices, Congress gave authors a second chance to strike better financial deals. As a result, in 1999, using Section 302 of the Copyright Act, Siegel's heirs recaptured his rights to the Superman character. Unlike authors of joint works created after January 1, 1978, each author of a pre-1978 joint work may serve a notice of termination on their own behalf and recapture their share of the copyright.

Fortunately, you don't have to be related to a man of steel to reclaim copyrights. The heirs of Hank Williams, William Saroyan, Truman Capote, Joe Young, Lorenz Hart, and many others have availed themselves of these valuable rights.

Estate Planning Considerations
 
As part of your estate planning, advise your statutory successors of your right to terminate. If you do not survive to exercise termination, that right is distributed to your family members as a statutory class. They may exercise this powerful right despite any agreement to the contrary. While copyright termination rights are kryptonite to copyright contracts, read on how this right can unintentionally be waived (given up).

Hoping they will catch family members off guard, publishers and motion picture studios may make offers to sweeten existing contract terms after an author dies.

Before signing an agreement that revokes and re-grants rights, family members should carefully review the document and consult with a termination rights attorney. If asked to sign during the period termination could be effected, they may be waiving their right to terminate.

If that later agreement revokes a publishing agreement, or film option, in exchange for a new contract, the new contract should be a significantly better deal than the previous grant. If not, they've lost the opportunity to renegotiate the terms of the agreement.

Bottom Line

Call us if you are thinking about exercising your termination rights or need assistance renegotiating your entertainment or publishing agreement. Fees will depend upon the complexity of the matter and the number of works being terminated. We can help you: (i) identify which copyrights are eligible for termination; (ii) determine who is the proper party to exercise those termination rights; (iii) prepare and record the notice of termination; (iv) help you renegotiate your existing contract; or (v) work with your trusts and estates attorney on reopening an estate, or seeking copyright damages that flow from a determination of ownership or co-ownership of a recaptured copyright.

NOTICE: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

LLOYD J. JASSIN is a book publishing attorney and former publishing executive with a special interest in defamation, copyright, and trademark matters.
He is co-author of The Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers (John Wiley & Sons). He has written extensively on negotiating contracts in the publishing and entertainment industries and has been quoted extensively in publications such as the New York Times, Time Magazine, Forbes, Fortune, Publishers Weekly, and the Columbia Journalism Review. You may reach him at jassin@copylaw.com or at (212) 354-4442. His offices are located at 1501 Broadway, Floor 12, New York, NY 10036, and in Madison, NJ.

(c) 2011 - 2024. Lloyd J. Jassin 
 

 
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